• Toshiba America Information Systems, Inc. / Apple Inc. v. Global Touch Solutions, LLCAll claims unpatentable
  PTAB · Dec 28, 2016 · IPR2015-01616 · APJ Justin Busch · IPR · Final written decision

  Claims 1–3, 19, and 20 are unpatentable as obvious over Layman and Beard, with Rathmann additionally for claim 19 and APA additionally for claim 20.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We have reviewed the Petition, Patent Owner Response, and Petitioner’s Reply, as well as the relevant evidence discussed therein. For the reasons that follow, we determine Petitioner has shown, by a preponderance of the evidence, that the challenged claims would have been obvious in view of the asserted combined teachings of the asserted references.” slip op. at 5

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

    “We agree with Petitioner’s arguments, as supported by testimony from Mr. Beard, that the combination of Layman and Beard teaches or suggests the uncontested limitations recited in claim 1 as well as the additional limitations recited in dependent claims 2 and 3, and we adopt those assertions as our findings. See Pet. 35–43, 50–51. For example, Petitioner points to Layman’s power management system 28 (electronic unit) connected to an infusion pump system (product), including pump circuits 34 (load), and to power sources (both an AC power source and a battery) through an electrical circuit as meeting the preamble of claim 1. Id. at 35– 37. Petitioner argues Layman’s disclosure of processor 42 providing a control signal to turn power to pump circuits 34 on or off in response to a signal received from switch 38 meets the recited microchip that controls “the flow of power from the power source to activate the load.” Id. at 38. Petitioner contends Layman’s switch 38 is not a serial element in the power circuit because switch 38 merely sends a signal to processor 42, which controls whether the pump is powered on, and that switch 38, therefore, teaches the recited switch. Id. at 38–39. Petitioner relies on Beard for teaching a touch sensor used to activate the battery capacity display. Id. at 39–40. We find the disclosures in Rathmann and APA relied upon by Petitioner teach or suggest the additional limitations recited in claims 19 and 20, respectively, id. at 52–55, and that a person having ordinary skill in the art would have had reason to combine Rathmann’s asserted teachings as proposed, id. at 30–34. We discuss the disputed limitations of independent claim 1 and the rationale for combining the asserted teachings from Layman and Beard in more detail below.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “All of Patent Owner’s challenges to Petitioner’s rationale assume the proposed combination replaces Layman’s battery with the battery disclosed in Beard. See, e.g., PO Resp. 8 (“While the Petition suggests replacing Layman’s battery with that of Beard would be desirable . . . .”) Petitioner does not suggest such a replacement. Rather, Petitioner asserts “[a] POSITA would have been especially motivated to combine Layman with Beard’s power-saving touch switch activated display in light of Layman’s stated desire for features that extend battery life and increase the time between battery replacements.” Pet. 28 (emphasis added). Petitioner reiterated its position, asserting that Patent Owner’s arguments do “not address Petitioner’s motivation arguments,” which are no “more than an obvious substitution of elements that were well known in the prior art.” Pet. Reply 2. Petitioner merely proposes incorporating Beard’s teaching of a touch switch activated display into Layman’s system. Pet. Reply 7 (arguing “the Petition analyzed whether one of ordinary skill would have found it obvious to incorporate a touch-sensor activated display such as in Beard into Layman’s system”). As discussed above, Petitioner has presented reasons with rational underpinning as to why a person having ordinary skill in the art would look to integrate Beard’s touch sensor activated display with Layman. We find Petitioner’s arguments persuasive, and we adopt those reasons as the rationale for combining the cited teachings of Beard with the cited teachings of Layman.” slip op. at 12

  Patent outcomesUS 7,265,494 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,265,494
• Samsung Electronics Co., Ltd. / Samsung Display Co., Ltd et al. v. Surpass Tech Innovation LLCAll claims unpatentable
  PTAB · Sep 6, 2016 · IPR2015-00887 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1–5 are unpatentable under § 103 as obvious over the instituted combinations of Janssen ’708 with Horii or APA, and Kubota for claims 4–5.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We adopt Petitioner’s proposed constructions for the terms “date lines” and “insulated with each other,” as we determine them to be consistent with the broadest reasonable construction. See Pet. 14–15. We interpret “date lines” as “data lines.” Id. We interpret “insulated with each other” to mean “spaced apart from and parallel to each other.” Id. We preliminarily interpreted these phrases the same way when we instituted trial. Dec. 7. These interpretations are consistent with the Specification’s figures and description of gate lines and data lines being orthogonally crossed. Ex. 1001, 1:45–45, Figs. 1A, 1B, 4–7; Ex. 1013 ¶¶ 33–34. We agree that when reading the description of gate lines and data lines being “orthogonally crossed,” and when viewing the figures of the ’550 patent, a person of ordinary skill in the art would understand that because of the insulation, these lines are not in physical contact with each other. Pet. 15 (citing Ex. 1013 ¶¶ 33–34). We determine that we need not construe any other limitations of the challenged claims.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “As stated in KSR, “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Here, a person of ordinary skill in the art would have recognized that the gate drivers of Horii would have made the device of Janssen ’708 functional. Thus, we agree with and adopt Petitioner’s reasoning for the combination of Horii and Janssen ’708. See Pet. 41–42; Ex. 1013 ¶ 60.” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Thus, based on the totality of the evidence before us, we are not persuaded that Janssen ’708 is directed to a lamp display as Patent Owner argues. See PO Resp. 15–28. We find that Janssen ’708 is relevant prior art to the field of LCD technology.” slip op. at 15

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We give Dr. Liu’s testimony substantial weight because this testimony is consistent with both Janssen ’708’s disclosure of video displays and with other evidence of record. As Dr. Liu explains, and as disclosed by Exhibits 1005, 1007, 1022–1024, 1026, 1027, and 1029–1031, thin film transistors are predominantly used to electronically access individual pixels (to charge or discharge the voltages on the pixel electrodes and thereby adjust their brightness) in a LCD device. Ex. 1020 ¶ 11. The amount of current that a thin film transistor conducts in the ON state (or conductive state) is very low (less than one thousandth of an ampere). Id. This very low amount of current is only adequate to charge or discharge a small capacitive load, such as a liquid crystal cell capacitance, and is insufficient to adequately drive a resistive load, such as an incandescent lamp. Id. Incandescent lamps are resistive devices that inherently require a relatively large amount of current (from a few tenths of amperes to tens of amperes) to produce a suitable light output. Id. A single thin film transistor, or even multiple thin film transistors, cannot source such a high level of current. Id. We find that Dr. Liu’s testimony outweighs the other equivocal evidence presented by Patent Owner. In particular, Dr. Liu explains that a person of ordinary skill in the art would understand that Janssen ’708 shows an active matrix liquid crystal display (“AMLCD”) driving circuit for an LCD pixel because a person of ordinary skill in the art would have understood that, by the time the application underlying Janssen ’708 was filed in 2001, the “video display” disclosed in Janssen ’708 with a row-column matrix of pixels is an AMLCD display that uses thin-film transistors” slip op. at 16

  Patent outcomesUS 7,420,550 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,420,550
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentable
  PTAB · Jun 13, 2016 · IPR2015-00466 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 2, and 4–28 are unpatentable as obvious over Miyazaki and Jaeger, Miyazaki, Jaeger, Wolf, and Felix, or Miyazaki, Jaeger, and Wolf.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “As noted by Petitioner, the third, fourth, and fifth embodiments of Miyazaki disclose methods of modifying the deposition temperature and/or the WF6 flow rate to achieve a desired thickness and stress level for tungsten layers 15 and 16. Ex. 1005, 7:51–8:5, 8:27–46, 8:56–9:7. The sixth embodiment then teaches how to vary the thickness of tungsten layers 15 and 16 to obtain a desired stress level in the combined metal film as a whole. Id. at 9:35–51, 10:33–38. Given the interrelated nature of these embodiments, we agree with Petitioner and Dr. Rubloff that one of ordinary skill in the art would have understood that Miyazaki contemplates depositing tungsten layers 15 and 16 in the sixth embodiment—in either a single or multi-chamber fabrication tool—using the operating conditions described in either of the third, fourth, or fifth embodiments. Ex. 1005, 9:24–34; Pet. 20; Reply 19–20; Ex. 1003 ¶¶ A13–15; Ex. 1019 ¶¶ 5C–E.” slip op. at 19

  Patent outcomesUS 6,030,893 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,030,893
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationSome claims unpatentable
  PTAB · Jun 13, 2016 · IPR2015-00467 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–3, 5–9, 11–19, and 28 are unpatentable as obvious over Emesh and Mak; claim 10 was not shown unpatentable over Emesh, Mak, and Miyazaki.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “5 The level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, although the parties disagree slightly as to the precise education and experience level possessed by a person of ordinary skill in the art, neither party asserts that resolution of the level of skill in the art between these two competing definitions would impact the outcome of this case. See Ex. 1003 ¶ 11; Ex. 2002 ¶ 40.” slip op. at 7

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “persuaded that the reference supports Dr. Rubloff’s testimony that one of ordinary skill in the art would have understood that two layers of tungsten could be deposited in a multi-chambered tool. See Ex. 1005, 9:55–58 (noting that the two tungsten layers could be formed in “different chambers or in different deposition machines”).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “On this record, Petitioner persuasively articulates—supported by the testimony of Dr. Rubloff—that one of ordinary skill in the art would have sought to implement Emesh’s two layer tungsten deposition process within two chambers of Mak’s multi-chamber fabrication tool in order to improve process stability and throughput. Pet. 13–15; Ex. 1003 ¶¶ B4–6, 29–30; Ex. 2005, 457:19–459–15. Petitioner also persuasively articulates that because Mak’s cold wall CVD chamber is similar to the Varian 5101 cold wall system used in Emesh, and because Mak discloses the deposition of tungsten over a broad range of pressures, one of ordinary skill in the art would have understood that Emesh’s tungsten deposition process could be performed in Mak’s multi-chamber tool. Pet. 13–15; Reply 12; Ex. 1003 ¶¶ B6–8 (citing Ex. 1010, 453–454; Ex. 1009, 4:66–5:8, 9:4–46); Ex. 1019 ¶ 2A.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “specifically requires a WF6 flow rate of 10–40 sccm,” see Ex. 2002 ¶¶ 89– 90, we note that the discussion of predetermined flow rates in Emesh is in relation to the “preferred embodiment,” and not the invention as a whole. Ex. 1009, 4:63–65, 5:36–42. Moreover, dependent claim 2 recites that “the flow rate of WF6 is maintained in the range 10 to 40 sccm,” raising a presumption that the WF6 flow rates of Emesh may be broader than 10 to 40 sccm. Id. at 12:39–41; see Bancorp Services v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1275 (Fed. Cir. 2012) (noting that “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim”). Thus, we are not persuaded that Emesh teaches away from, or would otherwise discourage one of ordinary skill in the art from modifying, the disclosed WF6 flow rate. Based on the foregoing, we credit the testimony of Dr. Rubloff and find that one of ordinary skill in the art would have sought to modify the WF6 flow rate of Emesh within the range of 40 to 133 sccm (while maintaining a H2/WF6 ratio of 6) with a reasonable expectation of success.” slip op. at 18

  Patent outcomesUS 6,030,893 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,030,893
• Apple Inc. v. Far Stone Tech., Inc.All claims unpatentable
  PTAB · May 25, 2016 · IPR2015-00599 · APJ Howard B Blankenship · IPR · Final written decision

  Claims 1–7 and 9–13 are unpatentable as obvious over Gold.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededDecided for patent owner

    “For purposes of Institution, we adopted the District Court’s construction of “selecting means” as referring to an operation that does not require description of corresponding structure (such as an algorithm) in the Specification beyond a general purpose computer. Dec. on Inst. 7. Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7

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

    “2. “Status” Consistent with the position taken by Patent Owner in the related District Court lawsuit, we interpret the term “status” as referring to a “state or condition.” See Ex. 2001, 17 (“Furthermore, the Court does not object to Farstone’s use of ‘state or condition’ as a substitute for ‘status’ in its proposed constructions.”). Patent Owner acknowledges and does not dispute this construction. PO Resp. 16. We see no need to depart from this construction for purposes of this Final Written Decision.” slip op. at 7

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

    “2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Section 103(a) — Gold Petitioner applies the teachings of Gold to the requirements of claims 1–7 and 9–13, relying on the Declaration of Andrew Hospodor, Ph.D. (Ex. 1002). Pet. 15–26. Upon consideration of Petitioner’s explanations and supporting evidence, we are persuaded by Petitioner’s contentions. We adopt Petitioner’s contentions as our own. Patent Owner argues in its Patent Owner Response that Gold fails to teach certain claim limitations, which we address in turn.” slip op. at 12

  Patent outcomesUS 7,120,835 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,120,835
• Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentable
  PTAB · Apr 20, 2016 · IPR2015-00460 · APJ Beth Z Shaw · IPR · Final written decision

  Claims 1–14 are unpatentable as anticipated by Doshi under § 102(e).

  RulingsFinal written decision

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

    “This portion of the Specification, however, does not persuade us that HSC’s proposed construction is the broadest reasonable construction. Rather, this sentence merely states that a nitride layer is anisotropically etched to form sidewall spacers that prevent shorting, not that the sidewall spacers are designed to prevent shorting. We are not persuaded by HSC’s argument and expert testimony that a spacer as recited in claims 1 and 9 must be a structure that is “purposefully designed into the fabrication process [in order] to achieve specific functions.” Id. at 8. Rather, in light of the Specification, we agree with Samsung that HSC’s proposed construction, which would require a structure “designed to” create physical separation, would render this claim limitation ambiguous and would focus on the intent of the manufacturer or state of mind of the accused infringer. See Reply 2–5 (citing Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). As Samsung notes, the plain meaning of the term “spacer” is “one that spaces.” Pet. 9; Reply 5; Ex. 1007. This is consistent with the Specification of the ’997 patent. See Ex. 1001, Fig. 2D, 3:20–21, 36–39. In view of the foregoing, we decline to adopt HSC’s proposed claim construction. Accordingly, we construe “spacer,” as recited in claim 1, as a structure that spaces between two conductive structures. Pet. 9.” slip op. at 9

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

    “Figure 3g of Doshi. Paper 31, 71:24. We cannot disregard Figure 3g, because patents are prior art for all they contain. “‘The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.’” In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)); see also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”); Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962) (“[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.”). We are not persuaded by HSC’s Declarant Mr. Maltiel’s testimony that the nitride etch process designed to clear the nitride layer 30 would etch away all of layer 30 exposed under the contact opening (see Ex. 2002 ¶ 67)—in direct contrast to what Figure 3g of Doshi depicts. Instead, we 19 find Figure 3g of Doshi depicts that nitride layer 30 remains after the second etch. See Ex. 1005, Fig. 3g. This is also consistent with Doshi’s written description. Doshi describes an etch that “substantially minimize[s]” damage “to the corners of gate structures 10 and sidewall filaments 11.” Id. at 10:4–16; Ex. 1011 ¶ 2E. In particular, once the nitride film 30 covering the NC of filaments 11 and gate structures 10 is etched through via the faster vertical etching of the highly anisotropic nitride etch, the subsequent additional etching time used to remove the remaining sidewall portions of film 30 would result in an etch of the NC portion of the filaments 11 and the gate structures 10. Ex. 1011 ¶ 2E. We agree with Samsung that during this additional time, given that filaments 11 are partially formed of silicon nitride, the highly anisotropic silicon nitride etch would etch into the portions of the filaments 11 formed of nitride. Reply 14 (citing Ex. 1005, 7:52–65; Ex. 1011 ¶ 2E). That scenario, proposed by HSC, would be contrary to Doshi’s Figure 3g and to Doshi’s “highly anisotropic” etch, which “minimizes damage” at the sidewall corner locations. Ex. 1005, 10:4–16. As Samsung argues, and we agree, if the goal is to minimize short circuits, then layer 30 would remain. See Reply at 15; Ex. 1011 ¶ 2E (“A POSITA would have understood that such damage to the structures 10 and sidewall filaments 11 undesirably increases the likelihood of shorts occurring between a contact plug and the gate electrode.”).” slip op. at 19

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Based on Doshi’s disclosure and the evidence before us, we agree with Dr. Rubloff’s testimony that Doshi’s anisotropic etch of the etch-barrier 22 nitride layer exposes the diffusion region and simultaneously forms a spacer on the sidewall of the gate electrode, as Dr. Rubloff’s testimony is consistent with the Doshi’s disclosure. Ex. 1003 ¶¶ A13–A14; Ex. 2004, 181:6–15; Ex. 1011 ¶¶ 2F, 5A–5D; see also Ex. 2005, 10:4–16, Figs. 3g–3k. In light of the foregoing, we credit the testimony of Dr. Rubloff over Mr. Maltiel’s testimony (Ex. 2002 ¶¶ 47–52) filed in support of HSC’s argument. See 37 C.F.R. § 42.65(a); see also Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”).” slip op. at 22

  Patent outcomesUS 6,146,997 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,146,997
• Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Home Semiconductor CorporationAll claims unpatentable
  PTAB · Apr 14, 2016 · IPR2015-00459 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Nakamura and Muller, with additional references applied to dependent claims.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION For the foregoing reasons, we determine that Samsung has demonstrated by a preponderance of the evidence that claims 1–20 of the ’244 patent are unpatentable based on the following grounds: Challenged Claim(s) Basis References 1, 9, 11, 12, 14–16, § 103(a) Nakamura and Muller 19, and 20 2–4, 6–8, 17, and 18 § 103(a) Nakamura, Muller, and Mukherjee 5 § 103(a) Nakamura, Muller, and Wolf 10 § 103(a) Nakamura, Muller, and Ghandhi 13 § 103(a) Nakamura, Muller, and Pierret 47 IV. ORDER For the foregoing reasons, it is ORDERED that claims 1–20 of the ’244 patent are held unpatentable;” slip op. at 47

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that “[i]f only a portion of the top surface were removed, the process would not result in a functioning device,” as they are predicated on the notion that a resist layer cannot be formed on a non-planarized surface, and that the deposition of the fourth dielectric layer produces an uneven surface. PO Resp. 14; Ex. 2002 ¶ 41. HSC, however, fails to provide credible evidence to show that forming a resist layer on a non-planarized surface would not produce a functional device. Although Mr. Maltiel’s testimony discusses the benefits of forming a resist layer on a planarized surface, as shown in the preferred embodiment, nothing in the “Description of the Prior Art” Section of the Specification indicates that the prior art devices were defective and non-functional devices. Ex. 1001, 1:11–2:9. Nor does Mr. Maltiel provide data or other objective evidence to support his assertion that forming a resist layer on a non-planarized surface would produce “a defective and non-functional device.” Ex. 2002 ¶ 41. Moreover, neither HSC nor Mr. Maltiel explains sufficiently why it is necessary to planarize the surface during the “removing” step. As evidenced by Nakamura, one of ordinary skill in the art would recognize that the fourth dielectric layer may be deposited by spin on glass, which produces a planarized surface. See Ex. 1004, 10:6–9, Fig. 1C. Mr. Maltiel’s testimony is entitled little, if any, weight, as it is inconsistent with the prior art of record. See 37 C.F.R. § 42.65(a) (“Expert testimony 11 that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 11

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

    “In view of the foregoing, we decline to adopt HSC’s proposed claim construction. Rather, in light of the Specification, we agree with Samsung that the aforementioned “removing” limitations recited in claims 1 and 14 require no more than making a hole through a top portion of the fourth 12 dielectric layer to expose a portion of the third dielectric layer covering the gate electrode structure. Pet. 28–29.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Even if the claims require a continuous etching process for removing both the third and fourth dielectric layers with the resist layer in place, we are persuaded by Samsung’s assertion that it would have been obvious to modify Nakamura’s etching process in the third embodiment to leave the resist layer in place and continue the anisotropic etching process, in light of the teachings in the first embodiment of Nakamura, because “it would reduce the time necessary to complete the etching process and likely 42 eliminate the need to transport the substrate between different tools.” Pet. 37. Such modification would not conflict with the objective— improving depth of focus—Nakamura was trying to achieve, as alleged by HSC. PO Resp. 48–49. Nakamura also describes simplification of the fabrication process and reduction of cost as important objectives. Ex. 1004, 10:57–61. As Dr. Rubloff explains, the process, as modified in light of Nakamura’s first embodiment, would still improve depth of focus, which is only one of the objectives taught by Nakamura, as well as achieving efficiency. Ex. 1014 ¶¶ 14–20. Dr. Rubloff testifies that one of ordinary skill in the art would consider all of the goals described by Nakamura and, after weighing the costs and benefits of each known technique, would make adjustments accordingly to improve the process. Ex. 1014 ¶¶ 9–12. Indeed, the modified process would utilize the planarization CMP technique of Nakamura’s third embodiment to improve depth of focus (Ex. 1004, 13:10– 38), and the continuous etching technique (with the resist layer in place) of Nakamura’s first embodiment to remove the third and fourth dielectric layers over the contact regions to improve efficiency (id. at 10:17–61). Therefore, we are persuaded that Samsung has articulated reasoning with rational underpinnings for modifying Nakamura’s third embodiment in light of the first embodiment of Nakamura. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 42

  Patent outcomesUS 6,150,244 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,150,244
• Sharp Corporation / Sharp Electronics Corporation et al. v. Surpass Tech Innovation LLCAll claims unpatentable
  PTAB · Feb 26, 2016 · IPR2015-00021 · APJ Sally C Medley · IPR · Final written decision

  Claims 4, 8, and 9 are unpatentable as anticipated by Ham under § 102(e).

  RulingsFinal written decision

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

    “Patent Owner faults Petitioner for not providing a construction for the term “generating” as recited in claim 4, but does not propose a construction for the term. PO Resp. 27–28. We find it unnecessary to expressly construe the term, because both parties agree that at least converting digital signals into analog data signals (impulses) meets the claimed “generating a plurality of data impulses” limitation. Pet. Reply 3–4; Ex. 1010 ¶¶ 50–54, 59; Ex. 1009, 114:3–12; Tr. 23.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We begin with the language of claim 4. Claim 4 recites generating a plurality of data impulses for each pixel within every frame period. The claim further recites applying the data impulses to the liquid crystal device of one of the pixels within one frame period in order to control a transmission rate of the liquid crystal device of the pixel. Based on the words of claim 4, data impulses (more than one) are applied to one of the pixels within one frame period to control a transmission rate of the liquid crystal device of the pixel. Absent from the claim 4 language is that (more than one of) the data impulses are “overdriven.”” slip op. at 6

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

    “We give Mr. Marentic’s testimony substantial weight because his testimony is consistent with the description of Ham and the ’843 patent. In other words, Ham describes performing the generating of data in the same way as is described in the ’843 patent. Even Patent Owner’s Declarant, Mr. Bohannon, agrees that Ham describes converting digital data into analog data and applying that data to data lines, e.g., the generating step. Ex. 1009, 114:3–12. And during oral hearing, Patent Owner also acknowledged that converting digital data into analog data would read on the generating step. Tr. 23. For all of these reasons, we determine that Petitioner has shown by a preponderance of the evidence that Ham describes generating a plurality of data impulses for each pixel within every frame period according to the frame data.” slip op. at 17

  • ExcludeMotion to exclude, deniedOther

    “Marentic’s declaration (Exhibit 1010) and deposition testimony (Exhibit 2007). PO Mot. to Exclude. In particular, Patent Owner argues that Mr. Marentic offers no facts or data to support his opinion on the level of skill in the art, and that his testimony is also inconsistent with what was presented in the Petition. Id. at 2. These arguments go to the weight that we give the evidence and, therefore, are an improper basis for excluding evidence. In any event, as discussed above, in rendering this Final Written Decision, we look to the prior art of record to inform us of the level of skill in the art, notwithstanding what the experts opine as to the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d at 1355; In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d at 91. Patent Owner further argues that portions of Mr. Marentic’s declaration (Ex. 1010 ¶¶ 92–93) should be excluded under FRE 802. PO Mot. to Exclude 2–4. In the objected to paragraphs, Mr. Marentic testifies, directing attention to several prior art U.S. patents (Exhibits 1012, 1013, and 1014), that “transmission rate” was a term known in the art, and that controlling a transmission rate would have been understood as merely applying a particular voltage to a pixel’s electrodes. Ex. 1010 ¶¶ 92–93. Patent Owner argues that the written statements in the prior art patents (Exhibits 1012, 1013, and 1014) are hearsay because Petitioner offers them for the truth of the matter asserted. Id. In rendering the Final Written Decision, we did not rely on Exhibits 1012, 1013, 1014, or Mr. Marentic’s testimony found at paragraphs 92 or 93. Patent Owner also objects to a portion of Mr. Marentic’s deposition testimony (Ex. 2007, 116:12–118:3) as nonresponsive. The objection goes to the weight to be given to the testimony, which is not a proper basis for a motion to exclude. For these reasons, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 19

  Patent outcomesUS 7,202,843 unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 7,202,843
• Avx Corporation / Avx Filters Corporation v. Greatbatch, LtdRehearing denied
  PTAB · Jan 11, 2016 · IPR2014-00697 · APJ Jon B Tornquist · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 unpatentable as obvious over Stevenson and Hazzard.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “III. ANALYSIS In a request for rehearing, the dissatisfied party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “extensive knowledge of electrical design concepts. Paper 19 (“PO Resp.”), 2–3. In the Final Decision, we rejected this identification of one of ordinary skill in the art as too narrow. Final Dec. 8. We noted that evidence of record supported Petitioner’s argument that a multidisciplinary team of professionals, including manufacturing, materials, and electrical design experts, would be involved in the development of EMI filters. Id. Thus, we concluded that a person of ordinary skill in the art “would have a degree in electrical engineering, chemistry, or physics, and would have work experience in the electrical or structural design of EMI filter capacitors or assemblies.” Id.” slip op. at 3

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “of ordinary skill in the art. Relying upon testimony from Mr. Galvagni and disclosures of the ’627 patent, we noted that expertise in the fields of structural and electrical design are both implicated in the design and construction of EMI filters. We did not conclude, however, that knowledge of structural design could substitute for electrical design expertise. Final Dec. 8. Indeed, as noted in the Final Decision, to the extent that Mr. Galvagni’s testimony is directed to electrical design concepts and not the structural or mechanical design of EMI filters, we took his relative lack of experience in electrical design into account when weighing his testimony. Final Dec. 25.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “B. KSR In the Final Decision we stated: Modifying a known device, using a known method, to achieve a predictable result, is obvious, even if one is willing to accept a known loss in performance others sought to avoid. KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)” slip op. at 5

  § 103 obviousnesscites KSR
  Patents in suitUS 5,905,627
• Avx Corporation v. Greatbatch LtdAll claims unpatentable
  PTAB · Dec 30, 2015 · IPR2014-01361 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–43 are unpatentable under § 103; proposed substitute claims 44 and 45 are not shown patentable, and the Second Motion to Amend is denied.

  RulingsFinal written decision

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

    “In our Decision on Institution, we discussed the meaning of the transitional phrase “consisting essentially of,” but otherwise found that no claim terms required express construction. Dec. on Inst. 4. In its Second Motion to Amend, Patent Owner does not dispute our interpretation of “consisting essentially of,” or propose constructions for any additional claim terms. Upon review of Patent Owner’s evidence and arguments, we conclude that no explicit constructions are required in order to resolve the issues pending before the Board.” slip op. at 6

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “establishing that it is entitled to add proposed substitute claims 44 and 45. 37 C.F.R. § 42.20(c). As part of this showing, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; (3) the amendment proposes a reasonable number of substitute claims; and (4) the proposed claims are supported in the original disclosure. 37 C.F.R. § 42.121. Upon review of the Second Motion to Amend, we are persuaded that the requirements of 37 C.F.R. § 42.121 have been met. For example, Patent Owner seeks to add only two substitute claims, each of which serves to narrow the scope of original claim 18. Mot. 17–18. Patent Owner also identifies exemplary electrolytes disclosed in the originally-filed application that fall within the scope of proposed substitute claims 44 and 45. Id. at 9 (citing Ex. 1010, 33, 35–36 (disclosing an electrolyte containing ethylene glycol, water, isobutyric acid, and ammonium hydroxide (which results in an ammonium salt of the organic acid) with a pH of 4.9, a conductivity of 7.1 mS/cm, and an anode breakdown voltage of 395 volts)). Thus, we focus on whether Patent Owner has met its burden of proof to show that proposed substitute claims 44 and 45 are patentable over the prior art of record.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Clark, however, discloses successfully substituting acetic acid in an electrolyte solution with “other low molecular weight paraffin acids,” including butyric, propionic, and lactic acids, as well as forming corresponding ammonium salts of these organic acids. Ex. 1003, 2:40–46, 3:46–61. Likewise, GB 466,193 broadly discloses that acetic acid may be replaced in an electrolyte solution with organic acids of the aliphatic series, including butyric acid and isobutyric acid. Ex. 1015, 3:73–79. In its Second Motion to Amend, Patent Owner does not point to any persuasive evidence to support or explain why a person of ordinary skill in the art would not have considered isobutyric acid, as implied in Clark and expressly identified in GB 466,193, to be a suitable substitute for acetic acid in the electrolyte of Shah. Indeed, similar to the disclosures of Clark and GB 466,193, the ’117 patent discloses that “other relatively weak organic acids of the general formula cnH2+nO2 (where n=2 to 7) are acceptable.”9 Thus, we are not persuaded that Shah, Clark, and GB 466,193 fail to teach or suggest every limitation of proposed substitute claim 44.” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › Unexpected resultsObjective indicia no nexusNot shown unpatentable

    “1 of Shah is ten times higher than electrolyte 2 of the ’117 patent, and the resulting conductivity (47.5 mS/cm) is 6.7 times higher than that of electrolyte 2 of the ’117 patent (7.1 mS/cm). First Mot. to Amend 9 (Table 3); Ex. 1001, 2:14–16 (confirming that the ammonium salt “provides electrical conductivity” in the electrolyte). Given the disclosure of Evans that anode breakdown voltage decreases with increasing conductivity (conductivity being the inverse of resistivity), Patent Owner does not explain persuasively why the 150 volt difference in anode breakdown voltage between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is “contrary to” the teachings of Evans. First Mot. to Amend 9 (Table 3),11; Ex. 2004, 3 (Figure 4). Nor does Patent Owner explain why a person of ordinary skill in the art could not use the disclosure of Evans to modify the resistivity of the electrolyte of Shah, Clark, and GB 466,193 to obtain an anode breakdown voltage within the 370 to 400 volt range of proposed substitute claim 45. Thus, we are not persuaded that the 150 volt difference between electrolyte 1 of Shah and electrolyte 2 of the ’117 patent is nonobvious or surprising. Patent Owner also contends that if acetic acid was equivalent to isobutyric acid, such that it could be replaced interchangeably, “a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 Patent electrolyte, both of which have almost identical pH~4.9.” First Mot. to Amend 11. We note, however, that, as set forth in Table 3 above, electrolyte 1 of Shah has a conductivity that is 6.7 times higher than electrolyte 2 of the ’117 patent, as well as ten times the ammonium constituent, two and a half times the acid constituent, half the ethylene glycol, and five times the phosphoric acid as compared to electrolyte 2 of the ’117 patent. In view of the wide difference in constituents and resulting conductivity levels between the two electrolytes, and in view of the teaching of Evans that anode breakdown voltage depends on the resistivity of the electrolyte, Patent Owner provides insufficient argument or evidence to explain why one of ordinary skill in the art would expect that “[i]f acetic acid were equivalent to isobutyric acid . . . a substantially similar anode breakdown voltage would have been achieved in both Shah’s electrolyte and the ’117 patent electrolyte . . . .” First Mot. to Amend 11. Accordingly, even if arguments made in the First Motion to Amend were considered, we would still not be persuaded that proposed substitute claim 45 is patentable over the prior art. Thus, we are not persuaded that Patent Owner has carried its burden to demonstrate, by a preponderance of the evidence, that proposed substitute claim 45 is patentable over the prior art of record.” slip op. at 16

  Patent outcomesUS 6,687,117 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,687,117

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.