- PTAB · Jul 22, 2024 · IPR2024-00425 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 9, and 10 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response, and informed by the pre-institution record, shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. Petitioner’s challenge over the combination of Beck, Heller, and Lovejoy counsels us not to discretionarily deny institution. Patent Owner does not dispute that Beck and Heller were not before the Office. See Prelim. Resp. 42–43; Prelim. Sur-reply 3. Although Patent Owner characterizes that as “irrelevant” (Prelim. Sur-reply 3), Petitioner asserts it relies on Beck to teach the limitation leading to allowance (Prelim. Reply 3). In fact, the Petition largely relies on Beck, or the combination of Beck and Heller, in its obviousness challenge and only relies on Lovejoy for a sliver of 11 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. first part of Advanced Bionics is not satisfied and do not exercise our discretion to deny institution for this reason. Even if we were to reach the second part of Advanced Bionics, we agree with Petitioner the Office erred in a manner material to the patentability of challenged claims by not applying the combination of Beck, Heller, and Lovejoy during prosecution, as evidenced by Petitioner’s reliance on that combination in its unpatentability challenges. Prelim. Reply 3; see Pet. 69–70. Petitioner specifically points out the Office erred by overlooking Beck’s “disclosure of the limitation that allegedly was missing from the prior art and led to allowance,” i.e., “wherein the remote server authenticates said unique sensor ID . . . and communicates to said wireless device . . . software related to the unique sensor ID.” Prelim. Reply 3. Patent Owner, at most, suggests Petitioner fails to demonstrate the Office erred in a manner material to the patentability of challenged claims because Petitioner’s combination does not show unpatentability. See Prelim. Resp. 43. However, as detailed in our analysis above, Petitioner adequately shows that the claims would have been obvious over the combination of Beck, Heller, and Lovejoy. Accordingly, we do not exercise our discretion to deny institution under § 325(d) over Petitioner’s challenge based on Beck, Heller, and Lovejoy. We need not address whether Patent Owner’s argument that Petitioner’s challenge based on Bandy warrants discretionary denial. Prelim. Resp. 40–42.” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“On this record, we determine the plain language and structure of the limitation does not support a construction requiring authentication using both the unique sensor ID and the unique wireless ID, as asserted by Patent Owner. The claim recites “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” but Patent Owner’s construction appears to read out the phrase “associated with” and adds an unrecited requirement to the claim such that the remote server authenticates said unique sensor ID and said unique wireless device ID. Ex. 1001, 19:51–52 (emphasis added). The language and structure of the limitation reads that the unique wireless ID is “associated with” the unique sensor ID. As such, the last portion of the limitation reciting “associated with said unique wireless device ID” serves to further describe the unique sensor ID, specifically, that the unique sensor ID is associated with the unique wireless device ID. 8 In Petitioner’s Reply and Patent Owner’s Sur-reply, the parties dispute the construction of this phrase. See Prelim. Reply 2; Prelim. Sur-reply 1–3. Those arguments go beyond the scope of the briefing we authorized on discretionary denial and inventorship (see Ex. 3001), so we do not consider them here. using both the unique sensor ID and a unique wireless device ID. The Specification does not use, let alone define, the terms “server” or “authentication.” See generally Ex. 1001. To the extent the Specification provides examples of access to a remote computer, those examples describe access on the basis of a sensor ID—but not a wireless device ID. In one example, a wireless device obtains software for a RFID sensor tag from “a centralized database for RFID tags or a diagnostics database that is accessed only by paying an access fee. Subsequently, the ID of the RFID sensor is matched to a given class of sensor (e.g. a glucose sensor) and the software and/or instructions for the analyses are downloaded” to the wireless device. Ex. 1001, 18:16–23 (emphasis added). Another example similarly provides access solely on the basis of a sensor ID: “a patient can . . . upload into the cell phone the necessary information to conduct any given test by matching the ID of the RFID sensor with given software and data tables stored remotely on computer 400.” Id. at 16:50–56 (emphasis added). Accordingly, for institution purposes, we construe “wherein the remote server authenticates said unique sensor ID associated with said unique wireless device ID” such that the remote server’s authentication requires use of a unique sensor ID; but the remote server’s authentication does not require use of the unique wireless device ID.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner
“On this record, we agree with Petitioner that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We are also preliminarily persuaded that Petitioner correctly identifies the recited functions and corresponding structure for these limitations. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); see Pet. 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10–11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). For purposes of this Decision, we apply the constructions identified by Petitioner. These are shown in the table below:” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 7,969,307 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artOther
“a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,554,910 - PTAB · May 8, 2024 · IPR2024-00080 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over Schneider.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in showing that the subject matter of claim 1 would have been obvious over Schneider, we institute inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2020) (35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) to deny institution in deference to the two co-pending district court infringement litigations. See Pet. 4. In support, each Petitioner entity (Dropbox, Inc. and Microsoft Corporation) “stipulates that, if the Board institutes IPR, it will not pursue in its parallel district court proceeding the grounds raised, or which reasonably could have been raised, in” the Petition. Id. Petitioner asserts this stipulation means “the PTAB will not discretionarily deny institution in view of parallel district court litigation.” Id. (quoting USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 at 3, 7). Patent Owner does not address discretionary denial in its Preliminary Response. We do not exercise the authority to discretionarily deny institution.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“held a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of file management, restoration, and archival systems.” Pet. 13–14 (citing Ex. 1004 ¶¶ 29–32). Petitioner further asserts “[m]ore education, e.g., a Master’s or PhD could compensate for a lack of work experience and vice versa.” Id. Patent Owner does not dispute this assessment. See Prelim. Resp. 9 (“Patent Owner does not offer a competing definition at this time, because even under Petitioner’s proposed definition the Petition fails to present a reasonable likelihood of success.”). For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’850 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any claim terms for construction. Petitioner states it “appl[ies] the plain and ordinary meaning of all claim terms.” Pet. 14. Patent Owner states it “does not believe any claim constructions are necessary based on the arguments presented by Patent Owner at this time.” Prelim. Resp. 26. We conclude, at this stage, that it is not necessary to address the construction of any claim terms or phrases. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,585,850 - PTAB · May 8, 2024 · IPR2024-00079 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–6, 8–20, and 23–31 on both asserted obviousness grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions at least for claim 1. First, we summarize the disclosures of Kenley and Long, then we consider the parties’ opposing contentions concerning the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 13, 18. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 13–15, 18; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–23. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,218,348 - PTAB · May 8, 2024 · IPR2024-00078 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–6 and 8–11 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Kenley and Long.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering all grounds in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 19, 24–25. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 19–21, 24–25; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–24. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,473,478 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,730,484 - PTAB · Mar 26, 2024 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR of claims 1–3 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of all challenged claims of the ’347 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field, and at least two years of experience in semiconductor device design and/or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 19 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 19. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’347 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’347 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”)” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“type gate material of independent claim 1 requires that the “bottom of the ptype gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite any numerical degree of horizontal extension, let alone a requirement that the bottom of the p-type gate material must be more than 10% wider than the top of the material. Thus, the plain language of the claims themselves do not support Petitioner’s proposed construction. Of course, the claims do not stand alone, but rather, must be read in view of the specification, of which they are part. Phillips, 415 F.3d at 1313. Petitioner relies on a numerical value for horizontal extension disclosed in Lidow, which is incorporated by reference in the ’347 patent. Pet. 20 (citing Ex. 1011 ¶¶ 41–42, Fig. 8; Ex. 1003 ¶¶ 70–74). But Lidow’s disclosure of a numerical value (10%) is made in the context of discussing a single embodiment. Ex. 1011 ¶ 41. Lidow does not include a numerical value in its disclosure of other embodiments. See, e.g., Ex. 1011 ¶¶ 43–51.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Again, Patent Owner’s arguments raise issues that are best resolved on a full record. While we do have some concern’s regarding Petitioner’s asserted reasons to combine all of the prior art references, Petitioner has provided sufficient argument and evidence for purposes of institution that a POSITA would have had reason to manufacture the modified Figure 1A of Saxler by using Beach’s self-aligned technique with Shenoy’s isotropic etching process, and would have had a reasonable expectation of success. Pet. 32 (citing Ex. 1003 ¶¶ 60–62, 93; Ex. 1014 (Xu); Ex. 1021 (Sheppard); Ex. 1015 (Smith); Ex. 1018 (Hu); Ex. 1009 (Shenoy); Widmann (Ex. 1023); Ahn (Ex. 1010); see also Pet. 31–35. For example, Dr. Shealy testifies that a POSITA would have recognized that using Beach’s self-aligned techniques and Shenoy’s isotropic etching process to arrive at Saxler’s non-recessed gate structure would have been a simple and predictable combination in view of Smith’s use of self-alignment techniques to create its stacked gate structure and would have done so to reduce steps and costs while improving reproducibility. Ex. 1003 ¶ 93. We also note that we understand Petitioner’s proposed combination uses a single photomask when etching both the gate metal and the p-type gate material layer, including when etching the gate metal to form a pair of ledges on the p-type gate material below the gate metal. See, e.g., Pet. 48 (stating that it would have been obvious to use one mask to etch the gate metal and cap layer and further stating that using Shenoy’s method of isotropically etching the gate metal would form symmetric undercuts of the photomask). To the extent, the Board’s understanding of Petitioner’s argument is not correct, the parties are urged to address this issue. Finally, Patent Owner asserts that Shenoy is non-analogous art and may not be combined with Saxler or Beach because Shenoy involves electrochemical etching, a highly specialized etching method with little relevance to the process described in the ’347 patent or Saxler. Prelim. Resp. 27.” slip op. at 32
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,748,347 - PTAB · Mar 26, 2024 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claims 1, 3, and 4 are unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’335 patent is unpatentable over the prior art of record, we institute an inter partes review of all challenged claims. And because we find some grounds sufficient for institution, we institute on all grounds in the petition. See SAS, 138 S. Ct. at 1353 (2018); PGS Geophysical, 891 F.3d at 1360. determination with respect to the patentability of any challenged claim or any underlying factual or legal issue, including claim construction. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–7 of the ’335 patent is instituted with respect to all grounds of unpatentability asserted in the Petition, commencing on the entry date of this Decision; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of trial.” slip op. at 54
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field, and at least two years of experience in semiconductor device design and/or 1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, took effect on March 16, 2013. Because the ’335 patent has an effective filing date prior to the effective date of the applicable AIA amendments, the pre-AIA version of § 103 applies. 2 US 2006/0108606 A1, published May 25, 2006 (Ex. 1007). 3 JP H11-261053, published Sept. 24, 1999 (Ex. 1005 (original language); Ex. 1006 (certified English translation)). 4 US 2007/0007547 A1, published Jan. 11, 2007 (Ex. 1008). 5 R.V. Shenoy, et. al, Effect of Mask Wall Angle on Shape Evolution during Through-Mask Electrochemical Micromachining, J. ELECTROCHEM. SOC., Vol. 143, No. 2, 544, Feb. 1996 (Ex. 1013). device operation, or the development of new device topologies.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 18. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’335 patent and the prior art of record, at this stage of the proceeding we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’335 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“type gate material of independent claims 1 and 5 requires that the “bottom of the p-type gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite 7 Patent Owner cites to the Lidow-508 patent itself, instead of the published application included in the record as Ex. 1011, which Petitioner cites to. The parties have not identified any difference between the two references. the bottom of the p-type gate material must be more than 10% wider than the top of the material. Ex. 1001, 5:5–6:30. Thus, the plain language of the claims themselves does not support Petitioner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As discussed above, however, we are persuaded, at this stage, by Petitioner’s argument that that Saxler teaches or suggests an operable enhancement-mode device. See § II.D.1.a.i, supra. Additionally, Patent Owner’s argument regarding modifications that “could be detrimental” to certain devices is not only speculation, but also comprised entirely of attorney argument. Finally, Patent Owner does not directly address Petitioner’s arguments and accompanying evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Saxler and Yoshida to take advantage of simplified manufacturing steps and reduced costs. Based on the present record, Petitioner has sufficiently shown that Saxler and Yoshida disclose or suggest all of the limitations in claims 1, 3, and 4, and that a person of ordinary skill in the art would have had a reason to combine the teachings of Saxler and Yoshida with a reasonable expectation of success. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its challenge that claims 1, 3, and 4 are unpatentable as obvious in view of Saxler and Yoshida. For the same reasons as noted above, we decline to address Petitioner’s challenge of claims 2 and 5–7 based on Saxler and Yoshida alone at this stage. See § II.D.1.c, supra.” slip op. at 44
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,312,335 - PTAB · Mar 20, 2024 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–12 on all petition grounds; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’294 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’294 patent on all of the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Patent Owner does not address the knowledge or education of a person of ordinary skill in the art. On this record, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends the terms “compensated GaN layer” and “above” require construction. Pet. 12–17; Prelim. Reply 1–5. Patent Owner contends only the term “compensated GaN layer” requires construction. Prelim. Resp. 5–15; Prelim. Sur-reply 1–3. Upon review of the parties’ arguments and evidence, we determine that only the term “compensated GaN layer” requires construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claims Claim terms are generally given their ordinary and customary meaning, which is the “meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. Patent Owner does not present evidence that the ordinary meaning in the art of a “GaN layer” is “GaN gate material.” Indeed, the prior art of record discloses multiple GaN layers that do not appear to be “gate material.” Ex. 1006 ¶ 32; Ex. 1005 ¶ 74 (“the channel layer 20 is GaN”); Ex. 1008 ¶¶ 24–25 (noting that the buffer layer and semiconductor layer are GaN). Nor does Patent Owner contend that the term “compensated” requires or implies a particular orientation or location with respect to the gate contact. Thus, by itself, the term “compensated GaN layer” does not require a “compensated GaN gate material.” Rather, Patent Owner contends that given the placement of the “compensated GaN layer” above the barrier layer and below the gate contact, one of ordinary skill in the art would have understood that the claimed “compensated GaN layer” is a “compensated GaN gate material.” Prelim. Resp. 7. We are not persuaded by this argument, at this stage of the proceeding, because the prior art (Uemoto) discloses a compensated GaN layer that is above a barrier layer and below a gate contact, as recited in claim 1, and Patent Owner contends this layer is not a “compensated GaN layer.” Ex. 1006, Fig. 7; Prelim. Resp. 31–32. This tends to suggest that the placement of a “compensated GaN layer” above a barrier layer and below a gate contact, without more, does not necessarily indicate that said layer is part of the gate. In view of the foregoing, on this record, we determine that the language and structure of claim 1 does not support a construction requiring that the “compensated GaN layer” be a “compensated GaN gate material.”” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Mar 20, 2024 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Yoshida, Beach, and Sheppard.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine that Petitioner has sufficiently shown a reasonable likelihood that it would prevail with respect to at least one claim of the ’508 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’508 patent on all grounds asserted in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply the pre-AIA law to the challenges. See Ex. 1001, code (30). 2 JP H11-261053, published Sept. 24, 1999 (Ex. 1004, pp. 8–11 (original language), pp. 1–7 (certified English translation), p. 12 (certification) “Yoshida”)). All references are to the English translation portion of Ex. 1004. 3 US 2007/0057624, published June 23, 2005 (Ex. 1005, “Beach”). 4 US 7,238,560, issued July 3, 2007 (Ex. 1006, “Sheppard”). 5 US Pub. App. No. 2006/0273347, published Dec. 7, 2006 (Ex. 1007, “Hikita-347”). 6 US Pub. App. No. 2008/0079023, published Apr. 3, 2008 (Ex. 1008, “Hikita-023”). education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’508 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’508 patent and the prior art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“At this stage of the proceeding, based on the present record, we determine that the claims require that the dielectric layer steps of [1f] must occur before the ohmic contact steps of [1g] but that the claims do not require that the gate structure be formed before the source and drain contacts. Step [1f] recites depositing a dielectric layer; applying a contact photo resistant pattern; etching the dielectric layer to open the drain and source contact area; and removing the contact photo resistant pattern. Ex. 1001, 7:5–9. Thus, it appears that the drain and source contact area recited in step [1f3] is the area where the drain and source contacts are formed. The ohmic contact steps of [1g] are directed to forming the drain and source contacts. As a matter of logic, the drain source contact area must be opened before the drain and source contacts are formed. As such, the dielectric layer steps of and removal of the contact photo resistant pattern––must be performed before the ohmic contact steps of [1g] to form the Ohmic drain and source contacts are performed. Petitioner does not dispute this construction. See Reply 1–9 (disputing whether the gate must be formed before the source and drain, but not disputing that the dielectric layer [1f1] must be deposited before forming the source and drain contacts [1g]).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“contact is formed after the source and drain contacts are formed––differs from Beach’s process––which appears to form the gate contact at the same time as the ohmic (source/drain). We also acknowledge Patent Owner’s arguments that these two methods are inconsistent and contrary to each other. Prelim. Resp. 20–22. However, Petitioner has provided evidence and argument, supported by declaration testimony, that it would have been obvious to combine Yoshida and Beach to arrive at the subject matter of claim 1. For example, Petitioner asserts that a POSITA would have been motivated to use Beach’s resist pattern 13 as a single gate photo resistant pattern to etch away both Yoshida’s gate contact layer and doped GaN layer in order to remove the second mask step to decrease costs and simplify the manufacturing process, as well as improve gate alignment. Pet. 21 (citing, inter alia, Ex. 1003 ¶¶ 125–126). Petitioner has also provided evidence and arguments, supported by declaration testimony, that a POSITA would have been motivated to use Beach’s resist pattern 13 as a metal photo resistant pattern to etch away Yoshida’s metal Al (ohmic contact metal) deposited on layer 4. Pet. 35 (citing Ex. 1004 ¶¶ 10, 22; Ex. 1003 ¶ 135). These contentions are sufficient, for purposes of institution, to show that a POSITA would have had reason to combine Yoshida and Beach in the manner and arguments, supported by declaration testimony, that a POSITA would have had a reasonable expectation of success in combining the teachings of the prior art to arrive at the claimed invention. Pet. 20. We have considered all of Patent Owner’s arguments to the contrary, and determine they raise issues best resolved on a full record. For all of the foregoing reasons, we determine that Petitioner has sufficiently shown that Yoshida, Beach, and Sheppard teach or suggest all of the limitations of claim 1 and that a person of ordinary skill in the art would have had reason to combine the teachings of the asserted art. Accordingly, we determine that Petitioner has demonstrated a reasonable likelihood of showing that claim 1 would have been obvious over Yoshida, Beach, and Sheppard.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,404,508
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.