• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision

  Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21

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

    “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25

  Patent outcomesUS 8,359,501 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

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

    “C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11

  • BurdenNot shown unpatentable

    “written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15

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

    “Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19

  Patent outcomesUS 8,516,185 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,516,185
• Emerson Electric Co. v. IP Co., LLCAll claims unpatentable
  PTAB · Jan 9, 2018 · IPR2016-01602 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 11, 13, and 14 are unpatentable under § 103 as obvious over the stated combinations of Burchfiel, Schwartz, and Heart, with Online Encyclopedia for claims 2, 5, and 11.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties differ on the level of ordinary skill applicable to this case. Petitioner contends the person of ordinary skill “would have a minimum of a bachelor’s degree in Electrical Engineering and 2-3 years of experience in the development and design, or technical marketing, of radio communications and computer network systems, or the equivalent.” Pet. 11. Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill in the art for the patent-in-suit would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent and experience with, or exposure to, computer networks and routing. A person of ordinary skill in the art would also have approximately two years of professional experience with computer networking, routing, and wireless networks.” Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition “since it does not specifically list Computer Science as a possible degree.” Id. at ¶ 78. We adopt Patent Owner’s slightly more inclusive definition. As the definitions do not differ substantially, however, under either we would reach the same result. C. Claim Construction” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “transmission paths from a particular client to the server. Pet. Reply 5–6. Petitioner responds that Patent Owner’s dictionary definition relates to “a physical map, not a structure for organizing data in mathematics or computer science.” Id. at 6. We agree with Petitioner that this particular definition of “map” is not pertinent to the subject matter of the ’516 patent, and therefore give Patent Owner’s argument based on this definition little weight. See id. If anything, the dictionary entry cited by Patent Owner supports Petitioner’s view that the construction of “map” should not be limited to multiple paths from one client. Thus, the second definition of “map” in the dictionary entry is not limited to multiple elements: “The correspondence of one or more elements in one set to one or more elements in the same set or another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We deem this second definition, identified as pertaining to mathematics (“Math.”), to be more pertinent to the technology of the ’516 patent than that chosen by Petitioner. Nor are we persuaded by Patent Owner’s other argument, based on the reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As Petitioner points out, claims 1 and 13 recite “changing the transmission path [singular] from the client to the gateway so that the path to the gateway is chosen.” Pet. Reply 6. We are, therefore, not persuaded by the arguments presented that the construction of this term in our Institution Decision requires modification. We therefore construe the term “map” as containing the paths or links to a node in the network, including a single path.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther

    “We agree with Petitioner that this term needs no express construction. However, we determine that it is necessary to address Patent Owner’s proposed construction, as it is central to its defense to Petitioner’s challenge. Patent Owner’s construction of this term is related to its proffered construction of “map of data packet transmission paths,” discussed supra. According to Patent Owner, “[t]he claim language itself . . . requires the server to change the selection of a transmission path including an identification of an entire path from the client to the server.” PO Resp. 13 (emphasis added). We disagree with this interpretation. The claim uses the word “chosen,” not “select.” We agree with Petitioner that this is a significant difference, in that “chosen” does not necessarily imply a selection among alternative paths. Pet. Reply 7. Further support for this conclusion is found in our discussion of “map of data packet transmission paths,” supra. There, we conclude that “map” should not be limited to multiple paths from a client. See supra. In the same way, the claim language should not be construed as requiring choosing from a selection of alternative paths. Patent Owner points to a decision in which another panel of the Board, in IPR2015-01901, construed the word “select” in a “related patent.” PO Resp. 13–14. We are not persuaded by that decision that we are misconstruing the claims at issue here, which do not use the word “select.” In the context of the ’516 patent claims, we do not regard “chosen” as having the same meaning as “select.”” slip op. at 13

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

    “We find that Petitioner has demonstrated that Burchfiel’s connectivity matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by Patent Owner’s arguments in rebuttal. First, addressing the “plurality of descriptions” argument, we have construed the term “map” as not limited to storing multiple paths from one client to the server. Thus, Patent Owner’s argument calling for a “plurality of descriptions” of a path from a client to the server is contrary to our construction. Moreover, we are not persuaded that a map must contain the “entire path.” We have construed “map” as containing the paths or links to a node in the network, including a single path. See infra. Thus, the “entire path” argument fails for this reason alone. We find, however, that even under Patent Owner’s construction of map as requiring a “description of the entire path,” Burchfiel would meet this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the path from the station to the server and from the server to the station. According to Burchfiel, a connection table provides a map of path information: Once a station has labelled all PRU’s and established connections to them, the information for maintaining these connections is entered into the station’s connection table. This contains the status information described above for handling the connection protocol. Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel specifically describes these connections as “bidirectional.” Pet. Reply 9 (citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bidirectional communication, the PRN connection is bi-directional.”)). Petitioner provides persuasive expert testimony to the effect that “it would have been obvious to recompute the route in both directions, to the extent not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the ‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to “bi-directional” connections suggests such a computation. “Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017). We find based on the foregoing that Burchfiel’s disclosure would teach or suggest to a person of ordinary skill that the connection table stores bidirectional path information.” slip op. at 18

  Patent outcomesUS 6,249,516 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,249,516
• Microsoft Corporation v. Bradium Technologies LLCAll claims unpatentable
  PTAB · Jul 26, 2017 · IPR2016-00449 · APJ Minn Chung · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious under § 103(a) over Reddy and Hornbacker.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Patent Owner’s argument against a master’s degree is unpersuasive because “[t]he actual inventor’s skill is irrelevant” to the level of skill of a hypothetical person of ordinary skill in the art. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Nonetheless, the parties’ definitions are not necessarily inconsistent because Dr. Agouris opines that a person of ordinary skill in the art at the time of the invention would have had at least two years of experience in image and graphics processing including developing, designing, or programming client-server software for computer networked environments beyond a bachelor’s degree. Ex. 2003 ¶ 17. First, we do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. Second, the parties do not argue, nor do we find, that the difference between two and five years of experience by a person of ordinary skill in the art would impact the obviousness inquiry in any way in this proceeding. Based on the foregoing, we determine that a person of ordinary skill in the art at the time of the invention of the ’506 patent would have had a Bachelor of Science or equivalent degree in electrical engineering or computer science as well as two to five years of experience in a technical field related to geographic information system or the transmission of digital image data over a computer network.” slip op. at 14

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

    “4. Reasons for Combining Reddy and Hornbacker Having determined that the combination of Reddy and Hornbacker discloses the elements recited in claims 1–21, we address the question of whether a person of ordinary skill would have been motivated to combine the teachings of these references. The motivation to combine need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F. 3d 1356, 1361 (Fed. Cir. 2006). There is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention; the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art. Id. (citing Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997)). Petitioner states that Reddy and Hornbacker seek to achieve similar objectives, i.e., transmission of large images (Pet. 23), and take a similar approach, i.e., using tiled images and accessing the database through the world wide web (id. at 22–23). Petitioner contends Reddy teaches an overall system that enables a standard computer, such a PC or laptop, to access large scale geographic information, but does not disclose the use of compression. Id. at 22–23. Petitioner cites Hornbacker as analogous art for its disclosure of GIF compression of image data for efficient transmission on the Web. Id. at 23. Petitioner argues that a person of ordinary skill would have been motivated to combine the teachings of Reddy and Hornbacker because Reddy teaches the need for a system that can operate on a conventional computing device to access large amounts of geographic information, and Hornbacker, relying on similar network and Internet technologies, teaches operating on limited bandwidth connections (e.g., 28.8 Kbytes/sec) to allow a client to request specific image view data, e.g., in a manner closely related to Reddy’s flyover capability. Id. at 24–25.” slip op. at 58

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

    “Perhaps most persuasive, however, are statements in Reddy that using VRML offers cartographers and geographers the potential to disseminate 3- D maps and spatial data over the World Wide Web, that as one zooms into a region, higher resolution data such as elevation and imagery are progressively downloaded and displayed, that the functionality is implemented in a standard VRML browser for downloading data over the World Wide Web and that, but for its essential management of a level of detail using the view dependent techniques disclosed (including projected screen size to decide when to reduce terrain detail), the time required to download and render such a model would prohibit real-time interaction using the current generation of VRML browsers. Ex. 1004 ¶¶ 1, 3, 9, 12, 42, We note, in particular, Reddy’s disclosure of view dependent level of detail techniques and are not persuaded that Reddy teaches away from operation on a limited bandwidth communications device. In other words, the key feature disclosed in Reddy that enables real- time interactions (even over the World Wide Web link) is the view dependent level of detail techniques, not any technique that would operate only on high speed network connections. We do not perceive, nor does Patent Owner identify, anything in Reddy’s view dependent level of detail techniques that implicates or specifies the speed or bandwidth of the communication connection over which the techniques are designed to operate. Therefore, we are not persuaded that Reddy teaches away from operation on a limited bandwidth communications device.” slip op. at 62

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

    “presumption of nexus because its evidence is tied to specific products that embody the claims of the ’506 patent. PO Resp. 53 (citing Declaration of Mr. Isaac Levanon (“Levanon Decl.”)7 ¶¶ 1–94; Exs. 2013, 2021, 2044, 2055). In support of its contention, Patent Owner cites to the entirety of the Declaration of Mr. Isaac Levanon, all 94 paragraphs of it, as well as four exhibits, without explaining what is discussed in the Levanon Declaration, what the cited exhibits are, what the significance of the exhibits is, and how the cited evidence show the claimed invention is embodied in which specific Patent Owner product. Without Patent Owner’s explanation to guide us through the evidence, we are unable to determine whether Patent Owner’s evidence is tied to specific products that embody the claimed invention. Therefore, Patent Owner does not demonstrate that it is entitled to a presumption of nexus. Accordingly, we consider the issue of nexus in the context of the specific objective considerations presented by Patent Owner in what follows.” slip op. at 65

  Patent outcomesUS 8,924,506 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,924,506
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-01312 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.

  RulingsFinal written decision

  • BurdenOther

    “Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6

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

    “meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5

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

    “embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14

  Patent outcomesUS 5,965,924 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,965,924
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-00290 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.

  RulingsFinal written decision

  • BurdenOther

    “Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6

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

    “meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14

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

    “embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11

  Patent outcomesUS 5,965,924 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,965,924
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-01313 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 14, and 16 are unpatentable as anticipated by Sakamoto; claims 4–6 and 13 are unpatentable as obvious over Sakamoto and Cederbaum.

  RulingsFinal written decision

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

    “BACKGROUND On June 8, 2016 we instituted an inter partes review of claims 1–6, 13, 14, and 16 of U. S. Patent No. 5,965,924 (“the ’924 Patent”) based on a Petition filed by Intel Corporation. Paper 12 (“Dec. to Inst.”). DSS Technology Management, Inc. (“Patent Owner”) waived its right to file a Preliminary Response. On August 29, 2016 we instituted inter partes review of the same claims on the same grounds based on a substantially identical petition filed by Qualcomm Incorporated, Globalfoundries Inc., Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC & Co. KG, Globalfoundries Dresden Module Two LLC & Co. KG, in IPR2016-01313. We then joined IPR2016-00289 and IPR2016-01313. Papers 18, 19. In this joined proceeding, we refer to Intel Corporation, Qualcomm Incorporated, Globalfoundries Inc., Globalfoundries U.S. Inc., Globalfoundries Dresden Module One LLC & Co. KG, Globalfoundries Dresden Module Two LLC & Co. KG, collectively as “Petitioner.”” slip op. at 2

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

    “meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 25. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5

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

    “not shown, we are persuaded that the evidence supports the proposition that the implanted p-well region is part of the silicon substrate. Based on this analysis, we are persuaded that Sakamoto discloses element (a) a silicon substrate with a top surface. As to element (b), we are persuaded by Petitioner’s argument that Sakamoto discloses a diffusion region formed in said substrate. Element (b) also recites that the diffusion region is adjacent said top surface. Having determined that the p-well region is part of the substrate, we agree that Figure 1 of Sakamoto illustrates a diffusion region in the form of source/drain region 7 adjacent to the top surface of the substrate.” slip op. at 10

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

    “Petitioner persuasively argues that the evidence supports the conclusion that one of ordinary skill would have been motivated to combine the teachings of Cederbaum with those of Sakamoto because they both teach the same type of device and are directed to the same problem, i.e., stacking transistors in an SRAM. Pet. 51. Petitioner points out that Cederbaum and Sakamoto also disclose nearly identical structures with nearly identical components, with both employing an electrically conducting plug within an opening that contains a sidewall spacer to directly connect a diffusion region to a gate. Id. at 52–53. Petitioner cites Cederbaum’s disclosure of materials, such as refractory metals, to be used in forming the conductive plug and Sakamoto’s discussion of the advantages to using a conductive plug of increased conductivity. Id. at 53–54. Thus, Petitioner has demonstrated that it would have been obvious to one of ordinary skill to replace the polycrystalline plug 15 of Sakamoto with a refractory metal plug of tungsten, as disclosed by Cederbaum. Id. at 51. This feature (“said electrically conducting plug is a refractory metal plug”) is recited in claim 5 of the ’924 Patent. Claim 4 recites a metal plug and claim 6 recites the electrically conducting plug is formed of a material selected for the group consisting of titanium, tantalum, molybdenum, and tungsten. Petitioner cites Cederbaum’s disclosure at column 9, lines 31–65 as disclosing a tungsten conducting plug. Id. at 49–50. Claim 13 of the ’924 Patent depends from claim 1 and recites the further limitation “said conducting plug comprises an outer glue layer and a plug material therein.” Petitioner cites Cederbaum as disclosing an outer glue titanium nitride (TiN) layer and an inner plug material, i.e., tungsten. Pet. 55. Petitioner notes that one of ordinary skill would have understood that because the TiN is deposited in opening 28 of Cederbaum before the tungsten is deposited, the TiN layer is an outer glue layer and the tungsten is the inner plug material. Id at 55–56 (citing Ex. 1004, col. 9, ll. 31–47). Petitioner further notes that Cederbaum discloses the TiN layer acts as an outer glue layer because it improves adhesion of the inner tungsten layer. Id. at 56 (citing Ex. 1004, col. 9, ll. 36–43).” slip op. at 15

  Patent outcomesUS 5,965,924 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,965,924
• Department Of Justice v. Envisionit, LLCInstitution denied
  PTAB · Apr 26, 2017 · IPR2017-00180 · APJ David C Mckone · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 2, 4, 17, and 23 were unpatentable as obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We are not persuaded by Patent Owner. We generally accept a petitioner’s identification of real parties in interest at the time of filing the petition. Petitioner represents that IBM has not funded, directed, or otherwise controlled the preparation of the Petition in this proceeding. Pet. 3. Patent Owner introduces no evidence that reasonably brings into question Petitioner’s identification of real parties in interest. Moreover, Patent Owner has not shown persuasively that the indemnification clause at issue, which gives IBM an “opportunity as is afforded by applicable laws, rules, or regulations to participate in its defense,” gives IBM an opportunity to direct or control this proceeding.1 On this record, we are not persuaded that IBM is a real party in interest.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “1. Petitioner has not shown that Gundlegård was publicly accessible Gundlegård states on its face that it is a master’s thesis kept at Linköping University in Norrköping, Sweden, and is alleged to have been made available over the Internet. Thus, to determine a date on which Gundlegård was publicly accessible, we look to evidence of the library’s cataloging and indexing practices and any search capability of the library’s website. See Blue Calypso, 815 F.3d at 1348; Voter Verified, 698 F.3d at 1380; SRI, 511 F.3d at 1196. The Petition does not provide a detailed statement of Petitioner’s arguments as to the public accessibility of Gundlegård. Rather, Petitioner simply states “[a]s documented by the declaration of Amelia Nuss (Ex. 1021), the thesis was published at least as early as October 27, 2003.” Pet. 14. The detailed basis for Petitioner’s contention is stated in the Nuss Declaration. Patent Owner argues that this constitutes an improper incorporation by reference of arguments from the Nuss Declaration into the Petition, in violation of 37 C.F.R. § 42.6(a)(3). Prelim. Resp. 20–21 n.4. We share Patent Owner’s concern. Nevertheless, we agree with Patent Owner that the Nuss Declaration, even if considered, does not support a finding that Gundlegård was publicly available.” slip op. at 11

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

    “Although the parties propose competing constructions of “broadcast” (Pet. 7–8; Prelim. Resp. 14–18), we need not construe this or any other term for the purposes of this Decision to resolve the parties’ dispute. See Vivid Technologies, 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 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art would have had a bachelor’s degree in computer science, engineering, physics, mathematics, or other technical field, along with three to five years of practical cellular network and protocol design and software development experience. Pet. 7 (citing Ex. 1011 ¶ 28). Patent Owner does not propose a level of skill or contest Petitioner’s statement. Petitioner’s proposal is consistent with the level of ordinary skill reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); 4 The record does not include allegations or evidence of objective indicia of nonobviousness. In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 15

  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 9,136,954
• Sony Mobile Communications Inc. v. SSH Communications Security OyjAll claims unpatentable
  PTAB · Apr 20, 2017 · IPR2015-01869 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–32 are unpatentable: claims 1–3, 5–10, 12–16, 18–20, 22–27, and 29–32 as obvious over Bellovin; claims 1, 3–8, 10–12, 14–18, 20–23, 25, and 27–29 over Shuen and RFC 1234.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard in an inter partes review proceeding). Under the broadest reasonable interpretation standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 5

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Ex. 1040 cited by Petitioner in its Petitioner’s Reply as hearsay and as irrelevant. Mot. to Exclude 1. Petitioner relies on Ex. 1040 to support its obviousness case by stating “[i]n a co-pending action in the United Kingdom, the Patents Court found similar claims of related EP(UK) 2 254 311 invalid.” Pet. Reply 1 n.1. This issue is moot because this Final Written Decision does not cite to or rely upon Ex. 1040 or the Petitioner’s statement quoted above regarding Ex. 1040. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 48

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 17

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

    “specification and prosecution history. Cuozzo, 136 S. Ct. at 2144–46. There are, however, two distinct exceptions. The first is the circumstance in which a patentee sets forth a definition by acting as his own lexicographer. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.Cir.2012) (citation omitted). The second is the circumstance in which a patentee disavows the full scope of a claim term either in the specification or during prosecution. Id.; see also PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 745 (Fed. Cir. 2016) (citing disavowal as an exception to the broadest reasonable interpretation standard). Here, Patent Owner relies on several embodiments in the Specification and the knowledge of its Declarant, but does not cite to sufficient evidence: 1) of the patentee becoming a lexicographer defining a NAT as bidirectional between two “realms,” or 2) of a clear disavowal of a NAT which translates addresses in a single direction or operates in a single “realm.”” slip op. at 9

  Patent outcomesUS 8,544,079 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,544,079
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 15, 2017 · IPR2015-01872 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 7, 11–14, 17, and 20–25 were not shown unpatentable because Lu did not teach providing resources to queued users of packet data.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “1. Means-plus-function Terms Claims 11–14 and 17 recite several terms in means-plus-function format. Claim 24 recites several terms in the form of “logic for” performing the functions of parallel terms recited in claim 11. In the Institution Decision, we adopted Petitioner’s proposed constructions, set forth at pages 10–15 of the Petition, as our constructions for the means-plus-function terms of claims 11–14 and 17. Dec. 17–18. We also determined to treat the “logic for” terms of claim 24 as means-plus-function terms, see Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015), and adopted Petitioner’s statement of the structure corresponding to the “logic for” terms (Pet. 10–13). Id. at 18. Patent Owner does not dispute these constructions. PO Resp. 8. On the complete record, we maintain these constructions.” slip op. at 8

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

    “Read in light of the Specification, “providing said communication resource to queued packet data users on a tier-by-tier basis,” as recited in claim 1, means providing the communication resource to queued users of packet data on a tier-by-tier basis. We are persuaded by Patent Owner that this is the only reasonable reading that is consistent with the Specification. Petitioner provides no examples in the Specification consistent with its reading. Although the preamble of claim 1 recites a “method of processing queued data packets,” this is consistent with the Specification’s general statement that the invention pertains to “an improved packet data queueing algorithm,” Ex. 1001, 9:3. We do not read this general statement in the preamble of claim 1 (or the similar preamble recitations in claims 11 and 24) to provide a basis for construing more specific language in the body of the claim in a manner inconsistent with the description in the Specification. In sum, the only reasonable reading of “queued packet data users,” in the context of the dependent claims, and in light of consistent description in the Specification, is queued users of packet data, not users of queued packet data.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “such as initial class queues 416–438, organized into high, medium, and low classes, are “a plurality of individual packet data queues.” Pet. 19–20. As to claim element 1[b], “determining a total number of data packets that can use an available communication resource,” Petitioner points to Lu’s description of using a weight-based scheduling scheme to transfer packets from one level queue to another. Id. at 23–24. Petitioner identifies the transmission capacity of the output link (e.g., 209) as the “available communication resource,” and contends that such weighted transfer during a cycle includes determining a total number of data packets that can be transferred for a cycle.5 Id. at 24. Petitioner further contends that Lu’s description of using subscriber weights based on subscriber volumes for particular classes teaches “allocating different weights to each tier of service based on a number of users requiring access to the available communication resource,” as recited in claim element 1[c]. Id. at 28–30. Regarding claim element 1[d], Petitioner argues that “[b]ecause the weights of Lu vary with the 4 We refer the claim elements 1[a]–1[e] as identified in Section I.E, above. 5 Patent Owner contends that Lu does not teach claim element 1[b]. PO Resp. 12–23. Because we decide that Petitioner has not shown that Lu teaches claim element 1[e], as detailed below, we do not decide whether Petitioner has shown that Lu teaches claim element 1[b]. available capacity (which in turn would affect the ‘total number of data packets that can use an available communication resource’), the weights of Lu consistently indicate how much (i.e., ‘proportion’) of the capacity (‘total number of data packets’) each class (i.e., ‘tier of service’) will receive.” Id. at 32.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not simply rebuttal to the Patent Owner Response. Rather, it is an attempt to formulate a new prima facie case of obviousness. The Office has instructed that such improper Reply argument will not be considered: A reply may only respond to arguments raised in the corresponding opposition. [37 C.F.R.] § 42.23. While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or 6 In the Institution Decision, we considered Petitioner’s argument and evidence (including Mr. Lanning’s testimony, Ex. 1006 ¶¶ 96–97) and determined that Petitioner did not present evidence sufficient to show a reason to modify Lu and, accordingly, declined to institute as to claims 5 and 15. Dec. 26–27. unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1370 (Fed. Cir. 2016) (The “Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because IBS relied on an entirely new rationale.”). Accordingly, we do not consider Petitioner’s Reply argument for claim element 1[e]. For the same reasons, we do not consider the argument Petitioner made for the first time at the oral argument (Tr. 22:17–23:2). Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768 (“A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”); see also Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016) (“In this case, the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”).” slip op. at 25

  Patent outcomesUS 7,385,994 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,385,994

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.