• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentable
  PTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8

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

    “history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10

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

    “Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15

  Patent outcomesUS 8,558,223 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,558,223
• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.All claims unpatentable
  PTAB · Jan 22, 2026 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–16 are unpatentable: claims 1–13 and 15–16 on anticipation and obviousness grounds, and claim 14 on obviousness over Choulis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner repeatedly refers to “a POSITA” without addressing the definition of that term or contesting Petitioner’s proposed definition. See Resp. 1, 2 n.1, 3, 8, 9, 15–21, 23, 26, 29, 32–33, 35, 37, 38, 40, 41, 44–49, 51–57, 61, 62 (bare references to “a POSITA”). Neither party indicates that the ultimate result on patentability would change depending on the definition selected. We adopt Petitioner’s proposed definition, which is not contested, because it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 7

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

    “because no information raised during the trial phase of this review changes the calculus: First and foremost, the plain terms of claim 1 include no language from which we reasonably can impose limits on the phrase “matrix material” as urged by Patent Owner. In addition, the specification includes no special definition of that phrase that supports importing Patent Owner’s proposed narrowing limitation into the claim. Furthermore, we are directed to no disclaimer of claim scope during patent prosecution that would support Patent Owner’s twice-rejected argument that the phrase “matrix material” in claim 1 excludes embedded dopants and dispersed agglomerations. And the extrinsic evidence advanced by Patent Owner during this review is ineffective to override the clear interpretation of “matrix material” that is established by the intrinsic evidence. Reply 1–7.10” slip op. at 8

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

    “We find that Petitioner establishes by a preponderance of the evidence that Choulis anticipates claim 13. We agree with Petitioner, in that regard, that Choulis explicitly teaches “using spin-coating as a method for depositing materials, which involves a simultaneous application process” as required by claim 13. Reply 16 (citing Pet. 40–41; Ex. 1044 ¶ 45).16 We 15 Petitioner raises Djobo as a background reference supporting that Choulis anticipates deposition of PVK by evaporation. Pet. 41. Patent Owner counters that Djobo, to the contrary, shows that Choulis does not teach deposition of PVK by evaporation. Resp. 48. In other words, both parties cite Djobo in connection with the ground based on anticipation by Choulis. Against that backdrop, we determine that Patent Owner waives any argument that Petitioner improperly cites Djobo as a background reference in support of the anticipation challenge, which is based on Choulis alone. Resp. 48 (nowhere asserting that the challenge is deficient on that basis). That waiver arises because no argument, in that regard, is raised in Patent Owner’s Response see Inst. Dec. 34 (“The Board shall deemed waived any issue not raised by Patent Owner in a timely response to the Petition . . . .”). 16 Patent Owner’s statement that “spin coating tends to cause phase separation” is not developed adequately on this record and, therefore, is further agree with Petitioner that Patent Owner “has not contested this point.” Resp. 48. “Therefore, there is no genuine dispute regarding the unpatentability of claim 13,” although Patent Owner raises “arguments concerning evaporation, which is a distinct process from spin-coating” relevant to the additional limitations of claim 14. Reply 16. We determine that Petitioner establishes by a preponderance of the evidence that Choulis anticipates claim 13. Patent Owner, however, has the better position on whether Choulis anticipates claim 14, which “includes the requirement of applying matrix materials via evaporation coating.” Reply 16. Petitioner seems to abandon that challenge in the Reply by raising arguments that appear, on this record, to bear exclusively on whether the subject matter of claim 14 would have been obvious over Choulis.17 Id. at 16–17. Those arguments are insufficient to counter Patent Owner’s reasons why Choulis does not anticipate the “evaporation coating” limitation of claim 14. Compare id., with Resp. 48. On this record, therefore, we determine that Petitioner does not establish by a preponderance of the evidence that Choulis anticipates claim 14. unpersuasive to persuade us “that Choulis does not have three matrix materials.” Sur-reply 15. That argument runs counter to Choulis’s explicit, intrinsic disclosures, which illustrate (Ex. 1004, Fig. 4) and describe (id. ¶ 30) an organic light emitting layer composed of three matrix materials. See Pet. 24–25 (citing Ex. 1004, Fig. 4, ¶ 30); see also Ex. 1003 ¶¶ 85–88 (persuasive declaration testimony of Dr. Holmes, cited at Pet. 24–25). 17 There is some confusion on this point, given that both parties sometimes collapse, into a single argument, whether Choulis anticipates or renders obvious claim 1. Compare Resp. 48, with Reply 16–17.” slip op. at 35

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

    “On this record, therefore, we determine that Choulis, at minimum, suggests that a person of ordinary skill in the art at the time of the invention would have recognized PMMA as a suitable alternative to PVK in Choulis’s Figure 4 embodiment, notwithstanding any differences raised by Patent Owner. Ex. 1004 ¶ 44. Patent Owner’s argument that no disclosure in Choulis suggests that an ordinarily skilled artisan “would have found it desirable to use PMMA in place of PVK in Choulis’s devices” misses the mark, where Choulis includes both PMMA and PVK in lists of materials suitable for use as host or matrix materials. Resp. 38; Ex. 1004 ¶ 44. “Our caselaw is clear. It’s not necessary to show that a combination is ‘the best option, only that it is a suitable option.’” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Even if Choulis does not expressly disclose substituting PMMA for PVK in the Figure 4 embodiment, “an ordinarily skilled artisan would have found it obvious to make that substitution.” Reply 10 (citing Pet. 31 (citing Ex. 1003 ¶ 100; Ex. 1044 ¶ 23)). The suggestion for that substitution is set forth unambiguously in Choulis’s listing of both “PVK” and “PMMA” as materials suitable for use as a first “host” material in Choulis’s organic functional layer; that is, “the light emitting layer” that is “described above” in Figure 4. Ex. 1004 ¶ 44. ii. Alternative Reasoning for Replacing PVK with PMMA Patent Owner counterargues that using PPMA in place of PVK would have been understood to “upset the hole and electron balance,” as well as “affect hole-charge recombination,” and “degrade the performance of the resulting OLED system.” Resp. 37. Petitioner responds with evidence that “it would have been a routine task for” an ordinarily skilled artisan “to optimize the composition of each component within the light-emitting layer to achieve the desired charge balance.” Reply 11 (citing Ex. 1004 ¶ 24). Petitioner’s response brings to light a second reason why an ordinarily” slip op. at 40

  Patent outcomesUS 8,723,164 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,723,164
• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.All claims unpatentable
  PTAB · Jan 22, 2026 · IPR2024-01095 · APJ Garth D Baer · IPR · Final written decision

  Claims 2, 4, 9–12, and 17 are unpatentable under § 103 over the Diekmann- and Suzuki-based combinations with the respective secondary references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices.” Pet. 10. Further, “[a]n individual with additional education could have less research or industrial experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s formulation. See generally PO Resp. We adopt Petitioner’s uncontested proposed definition because it is consistent with the disclosures of the asserted prior art. See, e.g., Ex. 1006, code (57); Ex. 1011, code (57).” slip op. at 7

  • BurdenUnpatentable

    “III. OBVIOUSNESS ANALYSIS Petitioner contends that claims 2, 4, 9–12, and 17 are unpatentable under 35 U.S.C. § 103. For the reasons explained below, we find that Petitioner has shown by a preponderance of evidence that these claims are unpatentable over the asserted prior art.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Resp. 16–24. We addressed this same issue in our Final Written Decision in IPR2024-01094. IPR2024-01094, Paper 42 at 9–13. As we explained there, Ma qualifies as prior art printed publication because the record evidence supports what Ma says on its face—that it was published online on August 29, 2008 by an Elsevier, an established publisher, in Synthetic Metals, which is a reputable journal. Id. For the same reason explained in IPR2024-01094, we agree with Petitioner that Ma qualifies as a prior art printed publication.” slip op. at 11

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

    “additional feature in claims 2 and 12, Patent Owner raises a number of challenges to Petitioner’s asserted rationale for combining Ma. See PO Resp. 27–47. First, Patent Owner asserts that skilled artisans would not have used Ma’s Liq dopant in Diekmann/Suzuki because both employ electron-donor dopants that operate differently from Liq’s electron-hopping dopant. Id. at 28–31. We disagree with Patent Owner’s argument because it highlights a difference in the references’ dopants without identifying any incompatibility. Even if Diekmann and Suzuki teach electron-donor type ndopants as Patent Owner asserts, neither precludes or disparages Ma’s electron-hopping dopant. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). As Petitioner explains, “Liq acts as an n-dopant in Ma,” which “increases ETL conductivity.” Pet. Reply 10. Patent Owner does not contest that Liq acts as an n-dopant in Ma. See Pet. Reply 30. Thus, Petitioner’s proposed combinations “substitute one known n-dopant for another to further the same goal of improving ETL conductivity.” Pet. Reply 10. Next, Patent Owner faults Petitioner for failing to show that using Ma’s Liq dopant in Diekmann’s/Suzuki’s ETL would result in lower diffusion or higher efficiencies as compared to Diekmann’s/Suzuki’s preferred n-dopants, which included cesium, barium, or lithium fluoride. PO Resp. 31–35; see PO Sur-reply 4–5. We disagree with Patent Owner’s argument because Petitioner does not need to show that Ma’s Liq n-dopant “was an improvement in a categorical sense” over Diekmann’s/Suzuki’s n-dopants, so long as Ma’s n-dopant was known and one skilled in the art would understand that implementing it had advantages. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023) (quotation marks omitted); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art.”). Petitioner does not assert skilled artisans would have used Liq because it was a superior to Diekmann’s/Suzuki’s preferred dopants, but because doping ETLs with Liq had known benefits including lower driving voltage and enhanced power efficiency from enhanced carrier injection increased transport conductivity, as compared to an undoped device. Pet. 37 (citing Ex. 1010, 813). That other potentially suitable or even superior n-dopants were also known does not make Liq nonobvious. Given Liq’s benefits outlined above, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination of Ma’s known dopant in Diekmann’s/Suzuki’s device would have been obvious to one skilled in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 11

  Patent outcomesUS 11,828,425 unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 11,828,425
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentable
  PTAB · Jan 5, 2026 · IPR2024-00911 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claim 10 was not shown unpatentable under § 103 over Toyama because the challenge did not remedy the deficiencies in its nonobvious base claim 8.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner’s proposed definition appears to be consistent with the cited prior art and the disclosure of the ’806 patent, and we adopt it for purposes definition of a POSITA.” slip op. at 8

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

    “In our Decision on Institution, we noted that the parties disputed construction of “each local contact” found in dependent claim 10, and “dielectric structure” recited in independent claim 8. Inst. Dec. 8–9. We determine that no express construction of “each local contact” recited in claim 10, or any other claim term, is required to resolve the issues in dispute in this proceeding.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “independent claim 8 would have been obvious for the reasons set forth in its petition in the 791-IPR. See id. at 1 (stating the present Petition maintains the same grounds set forth in IPR2024-00791). As explained in our Final Written Decision (Ex. 3001) in the 791-IPR issued concurrently, Petitioner did not show by a preponderance of the evidence that independent claim 8 would have been obvious over Toyama under any of Petitioner’s three alternative arguments. None of Petitioner’s arguments set forth in the present Petition, including the arguments directed to claim 10, remedy the deficiencies regarding its base claim 8. See Pet. 53–31, 98–101, 124–125; see also Reply. Accordingly, for the same reasons set forth in the Final Written Decision in the 791-IPR issued concurrently, Petitioner has not shown by a preponderance of the evidence that independent claim 8, and therefore dependent claim 10, would have been obvious over Toyama. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”); Ex. 3001.” slip op. at 14

  • Expert testimonyNot reached

    “Petitioner relies on the Declaration of Jack C. Lee, Ph. D. (Ex. 1003) and the Reply Declaration of Jack C. Lee, Ph.D. (Ex. 1043) in support of its 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’806 patent has an effective filing date after March 16, 2013 (Ex. 1001, codes (22), (63)), we refer to the AIA version of Sections 102 and 103. 3 Toyama, US Pub. No. 2017/0179026 A1, published June 22, 2017 (Ex. 1005). 4 Petitioner characterizes its alternative arguments of unpatentability of claim 10 as based on three “grounds.” See Pet. 15. Because each of Petitioner’s arguments are based on the same reference, albeit different embodiments, we characterize Petitioner’s challenges as three alternative arguments based on a single ground because each argument relies on the same reference. Ph.D. (Ex. 2005). Transcripts of the depositions of Dr. Lee (Exs. 2006, 2010) and of Dr. Yang (Ex. 1044) have also been submitted into the record.” slip op. at 7

  Patent outcomesUS 10,937,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,937,806
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentable
  PTAB · Jan 5, 2026 · IPR2024-00791 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 8, 9, 11, and 12 were not shown unpatentable under §103 over Toyama because the asserted structures did not meet the construed TAC limitation and the proposed modifications lacked adequate motivation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a bachelor of science degree in electrical engineering or a similar discipline” with “2–3 years of professional experience working with (e.g., researching, designing, or teaching) NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶ 34–38). Petitioner further contends that a “POSITA would also have been aware of and generally knowledgeable about semiconductor manufacturing and 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not object to Petitioner’s proposed definition (PO Resp. 12), but Patent Owner’s declarant Dr. Yang provides a slightly different definition, stating a POSITA: would have had at least a bachelor’s degree in electrical engineering, materials science, or a similar discipline, along with at least 2 years of professional experience in semiconductor fabrication process integration for memory devices or an equivalent level of knowledge and experience. For example, an experience, or extensive experience may replace some of the educational requirements. Ex. 2004 ¶ 43. Petitioner’s proposed definition appears to be consistent with the cited prior art and the disclosure of the ’806 patent, and we adopt it for purposes of this Decision. We note that our Decision would be the same under either definition of a POSITA.” slip op. at 8

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

    “(TACs) extending vertically through the dielectric structure” recited in claim element [8.G] encompasses multiple TACs, each extending through a separate, different dielectric structure, while Patent Owner argues that the phrase requires that the plurality of TACs (i.e., at least two TACs) must extend through the same dielectric structure. See, e.g., Pet. 49–50; PO Resp. 18–21; Reply 2–4. In our Decision on Institution, we preliminarily construed this phrase to require that more than one (i.e., a plurality) TAC in the TAC region extends vertically through a single dielectric structure. See Inst. Dec. 17. Based upon a full record, we construe this term of claim element [8.G.iii] (i.e., “ . . . a through array contact (TAC) region formed between the first and second channel regions, wherein the TAC region comprises a plurality of through array contacts (TACs) extending vertically through the dielectric structure”) according to its plain language to require that a plurality (i.e., more than one) of TACs must extend vertically through a (i.e., at least one) dielectric structure. Under this construction, the plurality of TACs may extend through more than one dielectric structure, but the plurality of TACs must extend through at least one dielectric structure. The plain language of the claim is not satisfied if each TAC extends through a separate dielectric structure because, in this scenario, there is not a plurality of TACs that extend through a dielectric structure.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Resp. 31–33. Patent Owner persuasively explains, with supporting testimony by Dr. Yang, that these regions containing the interconnects and peripheral circuitry would prevent repeating the layout in the hd1 direction because the interconnects and peripheral circuitry would be located in the same region that Petitioner proposes adding the additional memory plane. Id. (citing Ex. 2004 ¶ 72). Patent Owner further persuasively explains that Toyama teaches repeating the layout in the hd2 direction, not the hd1 direction, because of the location of its interconnects and peripheral circuitry, which prevents repeating the structure in the hd1 direction. See id. at 34 (citing Ex. 1005, Figures 17E, 17F). Patent Owner persuasively explains that Toyama Figure 17F (which is an alternate view of the structure shown in Figure 17E) shows that the memory array has interconnects and driver circuits on at least the left side, which means that in a modification adding additional planes, each plane would necessarily include these interconnects and driver circuitry on the left side. Id. at 35 (citing Ex. 2004 ¶ 75). We agree with Patent Owner that Petitioner has not sufficiently shown that it would have been obvious for a POSITA to repeat the structure shown in Figure 17E in the hd1 direction due to the presence of its interconnects and peripheral circuitry.” slip op. at 34

  Patent outcomesUS 10,937,806 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,937,806
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.All claims unpatentable
  PTAB · Jan 5, 2026 · IPR2024-00909 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–7 and 18 are unpatentable as obvious over Toyama, based on the First Exemplary Structure and, for some limitations, the Second Modification.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) NAND 2 We apply AIA 35 U.S.C. §§ 102, 103 to the ’378 patent because it was filed after, and never claimed the benefit of an effective filing date before, March 16, 2013. Petitioner also applies AIA §§ 102 and 103. See Pet. 2, 24–26. 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 104; PO Resp. experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 33 (citing Ex. 1003 ¶¶ 37–39). Petitioner further asserts that a POSITA “would also have been aware of and generally knowledgeable about semiconductor manufacturing and 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not object to such a definition. PO Resp. 13. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the Specification of the ’378 patent and the prior art of record.” slip op. at 5

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

    “Petitioner asserts that only the term “a staircase structure in the alternating layer” should be construed, and that the term should be construed as “a staircase structure in the alternating layer stack.” Pet. 32–33. Patent Owner does not dispute this construction, and our determination would be unaffected by Petitioner’s proposed construction. Therefore, we need not provide an express construction of this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Petitioner asserted that all other terms should receive their plain and ordinary meaning. Pet. 33.” slip op. at 6

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

    “Because neither the language of claim 15 nor the Specification indicates a narrower meaning, we agree with Petitioner that the phrase “a substrate with an isolation structure” should be given its plain meaning. Patent Owner argues that the plain meaning of “with” is “having” or “inclusive of.” PO Sur-reply 2 (citing Ex. 1038, 8). Citing the same dictionary, Petitioner argues that the plain meaning of “with” includes objects that are separate. Pet. Reply 3 (stating, “In the sentence ‘Alice went to school with Bob,’ it would be nonsensical to interpret that to mean that Bob is part of Alice.”) (citing Ex. 1038, 7). The cited definition of “with” states that it may indicate “accompaniment,” such as “went there [with] her,” as well as combination (“milk [with] honey”). Ex. 1038, 7. Based on the evidence and arguments presented, we determine that the phrase “a substrate with an isolation structure” should be given its plain meaning, which includes accompaniment (A is accompanied by B) as well as combination (A is part of B, or A and B are a part of C).4” slip op. at 9

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

    “We are persuaded by Petitioner that the lower volume of Toyama’s dielectric fill portion teaches the isolation structure and the upper volume of Toyama’s dielectric fill portion teaches the dielectric structure. First, the structure may be the same material; i.e., SiO2. Ex. 1001, 10:37–40 (isolation structure 233 filled with SiO2), 10:46–47 (dielectric structure can include SiO2, and can include the same material as dielectric layer 230), 10:12–14 (dielectric layer 230 is formed of SiO2). Second, the ’378 patent indicates that the dielectric structure may be “aligned to” and “in contact with” the isolation structure. Id. at 10:30–36. Thus, the two structures of the ’378 patent may appear as two aligned and contacting structures; e.g., a single column of the same material. Third, the ’378 patent specification describes that the dielectric structure and a top portion of the isolation structure may be formed in the same deposition step. When etching the opening 600 that is to be filled with dielectric structure 232, “opening 600 may extend partially into STI structure 233;” i.e., “the etch process used to form opening 600 may also remove (recess) portion of the top surface of STI structure 233.” Id. at 15:12–20; Fig. 6. Then, “opening 600 can be filled with a dielectric layer 702,” which may be the same SiO2 material as the isolation structure, and “[a]s a result, dielectric structure 232 is formed.” Id. at 15:42–54. Thus, the ’378 patent describes a dielectric structure that partially replaces or re-forms, with the same material, its isolation structure. The ’378 patent does not mention whether this results in a dielectric structure that extends into the isolation structure or an isolation structure re-filled to its original height, and it would not appear to matter because both structures may be composed of the same material. The ’378 patent’s indifference to the exact boundary between dielectric structure 232 and isolation structure 233 during formation from the same material indicates that these structures need not be taught by distinct elements. applicable only if the ’378 patent describes that the isolation region and dielectric structure were formed as a single unitary structure. PO Resp. 51; PO Sur-reply 16–18. Retractable Techs. focuses on whether the two elements at issue “could be formed as an integral structure in the first instance,” not whether they were formed integrally. Retractable Techs., 653 F.3d at 1304 (“The specifications further disclose a method to couple the two structures . . . to allow some diffusion or insipient melting to occur where they touch . . . . This passage suggests that [the structures] could be formed as an integral structure in the first instance”). Retractable Techs. looks to whether the specification suggests that the claim terms require separate structures. Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1232 (Fed. Cir. 2011). Patent Owner’s focus on whether the claimed structures were disclosed as being separately formed disregards the issue of whether the separately claimed structures require specific methods of forming those structures. Here, as in Retractable Techs. and Powell, the Specification does not indicate any particular structure or function for the structures that results from their separate steps of deposition. Thus, as held in Retractable Techs. and Powell, the two portions of Toyama “need not be two separate parts” to teach two separate claim limitations. Retractable Techs., 635 F.3d at 1303–04. Consequently, we determine that the claim language does not support a requirement that these structures be separate and distinct. Patent Owner’s further arguments are not availing. Contrary to Patent Owner’s argument, in our “Third” point, supra, we do not state that the isolation structure and the dielectric structure are formed in the same deposition step. PO Resp. 52–53; PO Sur-reply 18; Supra at 34. We only” slip op. at 33

  Patent outcomesUS 10,658,378 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,658,378
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.All claims unpatentable
  PTAB · Jan 5, 2026 · IPR2024-00788 · APJ Michael T Cygan · IPR · Final written decision

  Claims 15–17, 19, and 20 are unpatentable as obvious over Toyama, Mushiga, and Mushiga with Makala.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶ 36–37). Petitioner further asserts March 16, 2013. Petitioner also applies AIA §§ 102 and 103. See Pet. 2, 24–26. 3 Neither party presented evidence or arguments regarding objective evidence of non-obviousness during trial. knowledgeable about semiconductor manufacturing and 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. (emphasis omitted). Patent Owner does not object to this assessment. PO Resp. 12. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’378 patent and the prior art of record.” slip op. at 5

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

    “Petitioner does not dispute Patent Owner’s construction, asserting that its grounds render obvious this limitation under Patent Owner’s construction propose construction of the term “through array contact,” which was at issue in the Preliminary Response and in the parallel district court proceeding. Id. Nor have the parties indicated, in response to Board inquiry, that any relevant construction has occurred. See Paper 34. with Petitioner that Patent Owner does not dispute this aspect of the “a dielectric structure on the isolation structure” limitation in Petitioner’s assertions based on Toyama. PO Sur-reply 20–21. Patent Owner does dispute that Mushiga’s insulating spacer 586 is “on” the isolation structure. PO Resp. 70–72. However, because Petitioner relies upon a dielectric structure that includes other portions of Mushiga that Patent Owner does not dispute to be on the asserted isolation structure, the dispute is whether Petitioner is correct to include multiple components as part of a single dielectric structure, and not whether spacer 586 is on an isolation structure. Id. Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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 7

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

    “Patent Owner’s citations to the Specification do not support its proposed construction. Patent Owner relies on multiple embodiments, only one of which describes a substrate “with” an isolation structure. PO Resp. 21 (citing Ex. 1001, 22:27–28). For example, one of Patent Owner’s cited embodiments recites “on” an isolation region, but Patent Owner specifically argues that the “on” embodiment does not apply to the claimed “with” embodiment. Id. at 22 (denying that “the ‘with’ relationship encompasse[s] the ‘on’ relationship”). Only one of the embodiments cited is clearly within the scope of the “with” claim language, and that embodiment describes no more than the claim language itself. Ex. 1001, 22:27–28. Moreover, Figure 2, cited by Patent Owner, is an illustration “according to some embodiments,” but is not described as depicting all embodiments. Ex. 1001, 3:35–36. These other embodiments need not be included in claim 15’s “with” language because other claims (not at issue in this proceeding) specifically recite language from other embodiments. Ex. 1001, 23:20–21 (“a dielectric structure on an isolation region of the substrate”), 23:58 (“forming an isolation structure on a substrate”). Thus, the specification of the ’378 patent does not limit “a substrate with an isolation structure” in claim 15 to “part of” an isolation structure, such as in a shallow region or other partial-depth portion of the substrate. Because neither the language of claim 15 nor the Specification indicates a narrower meaning, we agree with Petitioner that the phrase “a Patent Owner argues that the plain meaning of “with” is “having” or “inclusive of.” PO Sur-reply 2 (citing Ex. 1038, 7). Citing the same dictionary, Petitioner argues that the plain meaning of “with” includes objects that are separate. Pet. Reply 3 (stating, “In the sentence ‘Alice went to school with Bob,’ it would be nonsensical to interpret that to mean that Bob is part of Alice.”) (citing Ex. 1038, 7). The cited definition of “with” states that it may indicate “accompaniment,” such as “went there [with] her,” as well as combination (“milk [with] honey”). Ex. 1038, 7. Based on the evidence and arguments presented, we determine that the phrase “a substrate with an isolation structure” should be given its plain meaning, which includes accompaniment (A is accompanied by B) as well as combination (A is part of B, or A and B are a part of C).” slip op. at 9

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

    “We are persuaded by Petitioner that the lower volume of Toyama’s dielectric fill portion teaches the isolation structure and the upper volume of Toyama’s dielectric fill portion teaches the dielectric structure. First, the ’378 patent indicates that both the dielectric structure and the isolation structure may be the same material; i.e., SiO2. Ex. 1001, 10:37–40 (isolation structure 233 filled with SiO2), 10:46–47 (dielectric structure can include SiO2, and can include the same material as dielectric layer 230), 10:12–14 (dielectric layer 230 is formed of SiO2). Second, the ’378 patent indicates that the dielectric structure may be “aligned to” and “in contact with” the isolation structure. Id. at 10:30–36. Thus, the two structures of the ’378 patent may appear as two aligned and contacting structures; e.g., a single column, of the same material. Third, the ’378 patent specification describes that the dielectric structure and a top portion of the isolation structure may be formed in the same deposition step. When etching the opening 600 that is to be filled with dielectric structure 232, “opening 600 may extend partially into STI structure 233;” i.e., “the etch process used to form opening 600 may also remove (recess) portion of the top surface of STI structure 233.” Id. at 15:12–20. Then, “opening 600 can be filled with a dielectric layer 702,” which may be the same SiO2 material as the isolation structure, and “[a]s a result, dielectric structure 232 is formed.” Id. at 15:42–54. Thus, the ’378 patent describes a dielectric structure that partially replaces or re-forms, with the same material, its isolation structure. The ’378 patent does not mention whether this results in a dielectric structure that extends into the isolation structure or an isolation structure re-filled to its original height, and it would material. The ’378 patent’s indifference to the exact boundary between dielectric structure 232 and isolation structure 233 during formation from the same material indicates that these need not be taught by distinct elements. We do not agree with Patent Owner that Retractable Techs. is applicable only if the ’378 patent describes that the isolation region and dielectric structure were formed as a single unitary structure. PO Resp. 50; PO Sur-reply 9. Retractable Techs. focuses on whether the two elements at issue “could be formed as an integral structure in the first instance,” not whether they were formed integrally. Retractable Techs., 653 F.3d at 1304. (“The specifications further disclose a method to couple the two structures . . . to allow some diffusion or insipient melting to occur where they touch . . . . This passage suggests that [the structures] could be formed as an integral structure in the first instance”). Retractable Techs. looks to whether the specification suggests that the claim terms require separate structures. Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1232 (Fed. Cir. 2011). Patent Owner’s focus on whether the claimed structures were disclosed as being separately formed disregards the issue of whether the separately claimed structures require specific methods of forming those structures. Here, as in Retractable Techs. and Powell, the Specification does not indicate any particular structure or function for the structures that results from their separate steps of deposition. Thus, as held in Retractable Techs. and Powell, the two portions of Toyama “need not be two separate parts” to teach two separate claim limitations. Retractable Techs., 635 F.3d at 1303– 04. Consequently, we determine that the claim language does not support a requirement that these structures be separate and distinct.” slip op. at 32

  Patent outcomesUS 10,658,378 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,658,378
• Albany International Corp. v. Voith Patent GmbHInstituted
  PTAB · Dec 12, 2025 · IPR2025-01116 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Sudre, Lee, and Penven.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). In other words, a decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, if the Board institutes trial, it will “institute . . . on all grounds in the petition.” PTAB Consolidated Trial Practice Guide, 5–6 (Nov. 2019)1 (“CTPG”); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least (1) a Bachelor’s Degree (or higher) in material science, materials engineering, mechanical engineering, textile engineering, or a related field, and (2) a minimum of two years of working experience in textiles engineering, fibers and textiles manufacturing, or a related field.” Pet. 4 (citing Ex. 1003 ¶¶ 21–22). Petitioner also argues that “[a]dditional education could substitute for professional experience, and vice versa.” Id. On the present record, Patent Owner does not contest Petitioner’s proposed level of ordinary skill. Prelim. Resp. 25–26. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’566 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “Both parties argue that no claim terms require express construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 26. On the present record, we agree. 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))). To the extent the parties’ arguments regarding unpatentability do address claim construction issues, we address these issues below.” slip op. at 10

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

    “articulated a reason why a person of ordinary skill in the art would have combined the teachings of Sudre, Lee, and Penven. Prelim. Resp. 60–63. In particular, Patent Owner argues that a person of ordinary skill in the art “would not have been motivated to look into Penven to modify the teachings of Lee because Lee and Penven disclose substantially different structures.” Id. at 60–61. This argument does not address Petitioner’s proposed reason to combine, which looks to Lee and Penven each to modify Sudre, not to Penven to modify Lee. See Pet. 79–81. In addition, “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). In other words, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test 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, 425–26 (CCPA 1981). Petitioner provides “some articulated reasoning with some rational underpinning” to combine the teachings of Sudre with those of Lee and Penven. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, Petitioner directs us to Sudre’s teaching of “a method for manufacturing PMC,” to Sudre’s lack of teaching of “specific parameters, such as warp thread size and spacing” to satisfy the “particular requirements” of its fabric. Pet. 79 (citing Ex. 1003 ¶¶ 248–250; Ex. 1004, 1:2–5, 6:14–17). As Petitioner points out, id. at 79–80, Lee and Penven provided yarn diameters and loop diameters that were conventional, and there is evidence of record that a person of ordinary skill in the art would have used these conventional diameters in constructing Sudre’s paper machine clothing. Ex. 1003 ¶¶ 258–261, 263–266; Ex. 1006, 3:64–66.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,261,566
• Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.All claims unpatentable
  PTAB · Dec 12, 2025 · IPR2022-00218 · APJ Grace Karaffa Obermann · IPR · Remand

  On remand, claims 2, 5, and 6 were held unpatentable as obvious; the motion to amend was denied for proposed claims 16–21 and dismissed for claims 22–23.

  RulingsRemand decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent or the asserted prior art, and Petitioner’s reference to “laboratory experience” (id.) is too general to be useful in defining the level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three- Dimensional X-ray Microtomography”). For those reasons, we apply Patent Owner’s definition of a POSITA.” slip op. at 8

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

    “Neither party proposes any express claim constructions. See Pet. 17 (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). In accordance with the Federal Circuit’s mandate, however, we adopt and apply herein “[t]he plain meaning of the term ‘between 1 and 10,’” which “includes tiny, and even undetectable, magnification” and, moreover, we take account that Jorgensen anticipates claim 1, including that limitation. Paper 38, 11–12. We determine that no other claim term requires express construction for purposes of resolving any controversy between the parties. 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 10

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “i. Spot Size as a Result-Effective Variable First, Patent Owner argues that Petitioner fails to “identify any prior art that discloses an x-ray source having the claimed spot size.” PO Resp. 45. We agree with Petitioner, however, that Patent Owner “fails to consider the advantages of a smaller spot size” –– advantages that would have been known to a POSITA, given that they are discussed “in each of these references.” Reply 19. Petitioner further directs us to evidence that Patent Owner’s own witness, Dr. Bentley, “agreed that a POSITA would have been aware of tradeoffs between smaller and larger spot sizes.” Id. (citing Ex. 1024, 45:14–47:20). In other words, the evidence supports that spot size would have been a result effective variable and, on this record, that optimizing that variable in view of various “tradeoffs,” recognized by Patent Owner’s own witness, would have been within the level of ordinary skill in the art. Id.; see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). Patent Owner does not counter Petitioner’s evidence on that point, but instead, refers us back to a related argument in the Response, pertaining to whether one would have undertaken that modification with a reasonable expectation of success, which we address below in connection with Patent Owner’s third argument. Sur-reply 18 (citing PO Resp. 47–49).” slip op. at 12

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

    “smaller spot sizes.” PO Resp. 45. We recognize that an obviousness challenge may be overcome “by showing that the prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)). For a reference to teach away, however, it must state more than a general preference for an alternative invention. Specifically, it must “criticize, discredit, or otherwise discourage” investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In Patent Owner’s view, “Jorgensen teaches away from smaller spot sizes” because smaller spot sizes “require significantly more power to generate the desired flux.” PO Resp. 45. Patent Owner directs us to evidence that, at best, illustrates that this disadvantage would have been among the “tradeoffs between smaller and larger spot sizes” that inform the selection. Ex. 1024, 45:14–47:20 (Dr. Bentley’s cross-examination testimony); see PO Resp. 45–46 (evidence of proposed disadvantage). This evidence does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. Fulton, 391 F.3d at 1201. At best, we find that it may indicate a preference for a different spot size depending on the desired application.” slip op. at 13

  Patent outcomesUS 7,400,704 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,400,704
• Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedSome claims unpatentable
  PTAB · Dec 1, 2025 · IPR2024-00973 · APJ George R Hoskins · IPR · Final written decision

  Claims 1, 3–7, 9–13, and 15–18 are unpatentable as obvious over Reiner and over Reiner with Takahara; claims 2, 8, and 14 were not shown unpatentable.

  RulingsFinal written decision

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

    “patentability based solely on arguments considered above in the context of claim 4. See, e.g., PO Resp. 42–43, 47–52. Therefore, Patent Owner has waived any other argument. See Inst. Dec. 44; Paper 10, 10. We adopt Petitioner’s arguments concerning these claims having been obvious over Reiner as our own in this Decision. See Pet. 40–44, 50–56, 57–70, 71; Ex. 1003 ¶¶ 134–142, 154–168, 174–221, 227. Accordingly, we conclude a preponderance of the evidence establishes these claims are unpatentable as having been obvious over Reiner.” slip op. at 83

  • Expert testimonyOther
  • Skill levelOther

  Patent outcomesUS 9,184,157 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,184,157

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.