- Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2025-00075 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the asserted combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 10. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from the other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158).” slip op. at 40
- Skill levelOther
“Principles of Law B. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.9 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 25
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00783 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the listed combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction not adoptedDecided for petitioner
“construction for “enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabling,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabling.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabling” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that “nowhere does Dua teach or describe . . . providing an access key in exchange for information held locally in the PDK’s service blocks.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing, as they rely on Patent Owner’s arguments that “the specification defines ‘local, secured information’ as information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” (PO Resp. 30), with which, as discussed above, we do not agree. Dua discloses an “RFID Tag-Reader Module” which includes “Tag Memory 322” that may be tamper resistant. See Ex. 1004 ¶¶ 105, 109. Thus, we find persuasive Petitioner’s reliance on Dua’s Tag Memory 322, which locally stores information in a tamper-resistant manner, for teaching an integrated, secure memory for storing information locally, wherein the information is secured. Id. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Dua and Giobbi ’157 teaches “an integrated, secure memory storing local, secured information,” as recited in claim 1.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158). Patent Owner does not address Petitioner’s positions on combining the teachings of Dua and Giobbi ’157 and thus Petitioner’s positions stand unopposed as a part of this trial. We have reviewed Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Dua and Giobbi ’157 as proffered in the Petition.” slip op. at 40
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 10, 2025 · IPR2025-00806 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood of success on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’517 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977). To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). The invention claimed does not have to be described in ipsis verbis to satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The question of written description support should not be confused, however, with the question of what would have been obvious to the artisan. Whether one skilled in the art would find the claimed invention obvious in view of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). “A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“motivated to combine Beaumont and Hasan. Pet. 13–14. Petitioner argues that “Beaumont does not describe a specific interface for manually entering [policy and rules] preferences, Hasan discloses a GUI for exactly this type of policy specification.” Id. at 14 (citing Ex. 1003 ¶ 70). Petitioner asserts that Hasan discloses that its Java-based, “platform independent” GUI takes the form of a “familiar tree structure” and allows administrators to “configure device and service configuration data and policy information.” Id. (citing Ex. 1006, code (57), 7:7–26, 8:19–29, 18:9–20). Petitioner asserts that the combination of Beaumont and Hasan would have been straightforward, and a person of skill “would have been motivated to incorporate Hasan’s GUI so that administrators could conveniently configure preferences for Beaumont’s DNS servers through an intuitive interface.” Id. (citing, inter alia, Ex. 1003 ¶¶ 70–71; Ex. 1007 ¶ 23). Patent Owner does not present any arguments on the rationale to combine. See generally Prelim. Resp. We find that at this juncture Petitioner has presented sufficient rationale to combine Beaumont and Hasan.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We agree with Patent Owner that its understanding of a policy as a rule is consistent with the disclosure in the ’517 patent that “a policy may be created by generating a decision tree representing the ATC rules.” See Ex. 1001, 9:1–3. We do not agree with Patent Owner, however, that Beaumont in combination with Hasan does not disclose the claimed policy features as claimed. As discussed above, Petitioner relies upon Beaumont in combination with Hasan with its teachings on the use of Java-based GUIs in the form of a tree structure that allows administrators to configure device and service configuration data, as well as policy information. See Ex. 1006, code (57), 7:7–26, 8:19–29. For the policy teachings, Petitioner relies upon Beaumont’s “content provider DNS server that directs requests (traffic) according to a preference table (policy).” Pet. 15–16 (citing Fig. 1, ¶¶ 6, 17, 23). Petitioner also asserts that the Beaumont-Hasan GUI would enable an administrator to set policies for a selected content delivery server to allow setting server preferences and rules. Id. at 17–18 (citing, inter alia, Ex. 1007 ¶¶ 76–77). In support, Dr. Lin testifies that: The Beaumont-Hasan GUI would enable an administrator to select a content delivery server (e.g., in Japan) and set policies for that server. Hasan, 8:30–36, 10:25–34, 10:53–67; Beaumont, [0031]. For example, given the description in Hasan, selecting a server would bring up a menu enabling an administrator to assign the preferences shown in Fig. 3 of Beaumont. Hasan, 10:25–34; Beaumont, Figs. 2, 3, [0029]–[0031]. A POSITA would thus have recognized the combined GUI to “support[] the setting of said at least one policy using a decision tree representing rules” because it is presented in a “familiar tree structure” and would allow users to set server preferences and rules. Ex. 1003 ¶ 77 (emphasis added). Beaumont provides support for Dr. Lin’s testimony. Beaumont discloses that “rules such as selecting one [a server] based on user preferences can be used . . . [f]or example, a preference number can be assigned to each content delivery server and a destination domain.” Ex. 1007 ¶ 31. Beaumont further states that “FIG. 3 shows an illustrative example of incorporating preference numbers in a column.” Id. Thus, contrary to Patent Owner’s arguments, Beaumont discloses that rules or policies, represented by the preference number, are represented in the table shown in Figure 3 of Beaumont. Dr. Lin also testifies that in the Beaumont-Hasan combination “the GUI supports the setting of” policy is taught. Ex. 1003 ¶ 77. Hasan provides support that service policies can be modified by the use of a GUI. See Ex. 1006, 8:30–36, 10:25–34, 10:53–67. Accordingly, in the combination of Beaumont and Hasan, wherein the preference database is replaced by the GUI decision tree, Petitioner has provided sufficient evidence at this juncture that the combination of Beaumont and Hasan teaches that the GUI obtains a policy, the preference number, for the direction of network traffic, where the GUI supports the setting of the policy using a decision tree representing rules.” slip op. at 19
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,645,517 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 7, 2025 · IPR2025-00826 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–23, finding a reasonable likelihood of obviousness for claims 13–22 over Glines and Gupta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . 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 given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–23 of the ’112 patent. Accordingly, we institute an inter partes review of the ’112 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard 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, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 12. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Mowry further attests that “A POSITA would have understood Glines’s disclosure of providing content from an origin source would have included supporting more than one origin source (e.g., more than one website or content provider[)].” Ex. 1008 ¶ 262 (citing Ex. 1002, 12:11–22 (storing replica files that originate at an origin server 40), 13:21–14:3 (requesting “example.com”)). That statement, however, goes only to what Glines might be capable of doing, not to whether one would have modified Glines to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[o]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed inventions.”). Dr. “content providers” limitation, stating that it “would have been nothing more than replicating Glines’s teaching of storing and providing content associated with one origin server, with expected results.” Ex. 1008 ¶ 263. That statement, however, is unsupported, and moreover, does not explain how such replication would occur or what results would be expected. Prelim. Resp. 25–26. At this stage in the proceeding, Dr. Mowry’s testimony amounts to a “conclusory generalization” that does not provide the “reasoned explanation” sufficient to show that a limitation missing in the cited art was taught by the knowledge in the art. Arendi S.A.R.L v. Apple, Inc., 832 F.3d 1355, 1365 (Fed. Cir. 2016).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentablePTAB · Nov 5, 2025 · IPR2024-00792 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–6 were not shown unpatentable because the asserted references did not establish the claimed bias voltages and pre-verify stage.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 5–6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’957 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Expert testimonyPatent owner expert creditedOther
“It is within our discretion to assign the appropriate weight to Dr. Przybylski’s testimony. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding that the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declaration and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). On this record, we decline to generally discount Dr. Przybylski’s based on Petitioner’s contentions. When assigning upon which the testimony is based. See PTAB Consolidated Trial Practice Guide 40–41 (Nov. 2019). In our analysis of the asserted grounds of unpatentability, we weigh Dr. Przybylski’s testimony accordingly.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary 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, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record and the arguments raised by the parties, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“claim 1 would have been obvious over the combined teachings of Hongtao and Yu by a preponderance of the evidence. 35 U.S.C. § 316(e) (2018); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). After considering the parties’ arguments and evidence of record, and weighing the testimony of Dr. Liu and Dr. Przybylski, we are not persuaded that Petitioner meets its burden of establishing, by a preponderance of the evidence, that Hongtao teaches or suggests applying a second bias voltage that is smaller than the first bias voltage in the verify stage as recited in limitation [1.d]. Hongtao is silent with respect to the magnitudes of the pre-conduction and conduction voltages. Hongtao teaches that “a pre-conduction voltage is applied to both the unselected word line and the selected word line to turn on the channels of the selected string and the unselected string.” Ex. 1005 ¶ 23. Hongtao then teaches that, in the reading phase, “[t]he gates of the unselected memory cells on the selected string are applied with a conduction voltage through the unselected word lines.” Id. ¶ 25. Hongtao, however, describes the magnitudes of the pre-conduction and conduction relative to each other. See id. ¶¶ 21–26. Petitioner and Dr. Liu point to Hongtao’s statement that “the greater the conduction voltage, the greater the read disturbance” to support its contention that the conduction voltage is smaller than the pre-conduction voltage, but that statement refers to the relationship between conduction voltage and the read interference it causes and does not compare the conduction voltage to the pre-conduction voltage. See Pet. 40 (citing Ex. 1005 ¶ 26); Ex. 1003 ¶ 120 (citing Ex. 1005 ¶ 26). We also find credible Dr. Przybylski’s testimony that Hongtao lacks the details needed to determine how the gate voltages develop over time, in particular the length of the pre-conduction period. See Ex. 2003 ¶ 96. Dr. Przybylski’s testimony is consistent with the ’957 patent’s teaching that when the pre-pulse time is long enough that the bias voltages are fully developed before the TSG transistor is switched off at the unselected memory cell string, hot carrier injection “may not be generated from the selected memory cell to the upper adjacent memory cell of the selected memory cell in the selected memory cell.” Ex. 1001, 11:60–12:1. In contrast, when the pre-pulse time is insufficient for the bias voltages to fully develop, hot carrier injection may be generated. Id. at 12:1–9. And we are not persuaded that Petitioner and Dr. Liu sufficiently rebut Dr. Przybylski’s persuasive testimony that casts doubt on Petitioner’s contention that Hongtao teaches a second bias voltage that is smaller than a first bias voltage as recited in limitation [1.d]. For example, Dr. Liu’s testimony that Hongtao teaches applying voltages on gate terminals does not adequately address Patent Owner’s argument and Dr. Przybylski’s testimony that Hongtao depicts target values for the word line voltages instead of the See Ex. 1027 ¶¶ 16–40. Neither Petitioner nor Dr. Liu adequately establish that Hongtao’s applied voltages are sufficiently developed such that the preconduction voltage actually is bigger than the conduction voltage. Petitioner’s argument that Hongtao teaches or discloses a second bias voltage that is smaller than the first bias voltage hinges on a POSITA’s interpretation of Hongtao’s Figure 2. In light of Hongtao’s dearth of details regarding the absolute or relative magnitudes of the pre-conduction and conduction voltages, and Dr. Przybylski’s unrebutted testimony that Hongtao does not provide sufficient information to ascertain the actual bias voltages that will be applied on the gate terminals of the memory cells over time, we are not persuaded that Petitioner carries its burden of establishing that Hongtao discloses limitation [1.d]. For these reasons, we determine that Petitioner does not establish by a preponderance of the evidence, that independent claim 1, and claims 2–6 that depend, directly or indirectly, therefrom, would have been obvious over the combined teachings of Hongtao and Yu.” slip op. at 15
Patent outcomesUS 11,468,957 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,468,957 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentablePTAB · Nov 4, 2025 · IPR2025-00297 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the prior art did not establish the claimed distance-based variation in the rate of image-processing steps.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
Patent outcomesUS 8,982,109 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,109 - Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.No claims unpatentablePTAB · Nov 4, 2025 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the cited combinations did not teach or suggest varying the rate of the claimed image-processing steps according to user distance.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 14 (citing Forsyth Decl. ¶¶ 62– 63). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.7” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“Putting aside the controversy over alleged impropriety and sandbagging in connection with the District Court’s Order, which we address infra in connection with Patent Owner’s Motion to Strike, we find the District Court’s “mirror-mimicking” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent. See Ex. 2008, 16 (citing Ex. 1001, 2:5–27, Figs. 5A, 5B). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1001, 14:46–51, 15:41–47). Petitioner does not dispute that the ’109 patent discloses these aspects of “mirror-mimicking,” or even that the District Court’s claim construction is incorrect. Instead, Petitioner contends that “[t]he Board need not construe ‘mirror mimicking’ [beyond plain meaning] since the prior art expressly discloses mimicking a mirror.” Pet. Reply 6. Further. Petitioner characterizes the claim construction order as “a report and recommendation” by a magistrate judge that “the district court judge has not evaluated or adopted.” Id. at 6 n.2.9 We address infra whether the prior art “expressly” discloses “mirror- mimicking” as construed by the District Court. We, however, disagree with Petitioner that we should not construe this term. Given the controversy over whether Petitioner has argued for a different construction in the District Court, we cannot agree that an explicit construction of “mirror-mimicking” is an unnecessary step toward resolving this controversy. See Vivid Techs., Inc., 200 F.3d at 803. We therefore adopt the District Court’s construction for “mirror-” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to reduce distortion and provide a realistic mirror image.” Pet. 14–17; Haram Decl. ¶¶ 110–117. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 32–33 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We find that Petitioner has not demonstrated by a preponderance of evidence that step 1(h) is taught or suggested by the references cited by Petitioner or the testimony of Petitioner’s expert, Dr. Karam. We agree, instead, with Patent Owner’s argument that “a [person of ordinary skill] would regard the disclosures in Rosenberg relating to proximity detection to be in connection with turning on or off various display modes and not in connection with varying the rate of one or more steps that are performed to transform a series of captured images of a user.” PO Resp. 33 (citing Ex.1005, ¶¶ 25, 32, 56, 69, 114). This distinction was explored during the final hearing. Petitioner’s counsel confirmed that in Rosenberg’s mirror mode, the rate of performing the processing steps does not vary: [THE BOARD]: It’s true that when the -- when Rosenberg is acting in the mirror mode, it’s always at the same rate, correct? It’s always performing those three processing steps at the same rate? [COUNSEL]: Correct. Hearing Tr. 34:13–16. We conclude that Rosenberg fails to disclose or suggest step 1(h) for the reasons given by Patent Owner and summarized above. We agree with Patent Owner’s analysis that in Rosenberg, when the mirror is off the processing steps are not performed, and when the mirror is on, the steps are performed “at an invariant rate.” PO Sur-reply 18–19.” slip op. at 33
Patent outcomesUS 8,982,109 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,109 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00790 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–3 are unpatentable as obvious over Kim; claims 4 and 5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“SuperGuide, 358 F.3d at 875 (“We review the patent’s written description and drawings to confirm that the patentee’s own use of the disputed term is consistent with the meaning given to it by the court.”). The ’031 patent teaches that dielectric pairs of different tiers are etched to form staircases extending along the x-y plane. Ex. 1001, 13:27–28. As described above (§ I.D, supra), dielectric filling structure 311 is formed by depositing a dielectric filling material to fill the space remaining after portions of dielectric stack 203 are removed to form staircase structure 303. Id. at 13:36–41; see also id. at 22:63–65 (“Memory structure 1200 can be formed by forming dielectric filling structure 1201 to fill the space formed by the removal of portions of dielectric stack 1003.”) The ’031 patent then teaches that excess dielectric filling material overlying the topmost surface of staircase structure 303 is removed using a suitable planarization method. Id. at 13:41–44; see also 22:67–23:5 (performing a planarization process to remove excess dielectric filling structure 1201 over the top surface of memory structure 1200). According to the ’031 patent, the portion of the deposited dielectric filling material that remains “over staircase structure 303 and isolation layer 109” forms “dielectric filling structure 311 that surrounds staircase structure 303.” Id. at 13:44–48 (emphasis added); see also id. at 1:56–58 (stating in “some embodiments, the memory device also includes a filling structure surrounding the multiple-stack staircase structure”). structure is etched along the x-, y-, and z-axes, and the dielectric filling structure fills the spaces in the x-, y-, and z-directions created when the staircase structure is etched. Because the excess portion of the dielectric filling structure overlying the top of the staircase structure is removed, what remains is dielectric filling structure in the spaces around the staircase structure in the x-, y-, and z-planes. In this way, the ’031 patent teaches that the dielectric filling structure surrounds, i.e., is all around or encircles, the staircase structure.” slip op. at 11
- 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) monolithic 3D structures and NAND memory devices,” or “an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 22–23. Petitioner further contends that a “POSITA would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. at 23 (citing Ex. 1003 ¶¶ 41–44). Patent Owner states that it does not object to the definition of a POSITA proffered by Petitioner. PO Resp. 13–14 (citing Pet. 22). In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’031 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMixed
“Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23
Patent outcomesUS 10,868,031 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,868,031 - Apple Inc. v. Resonant Systems, Inc.All claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00983 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 10, 17, 19, and 20 are unpatentable under § 103 over Alexander and Cosper; the alternative Gregorio-based grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). But if the term does not use the word “means,” then it is presumed not to be subject to Section 112(f). Id. “That presumption can be overcome, but only if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation, read in light of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“both parties have asserted in the Apple Litigation that the “control component” requirement is a means-plus-function limitation subject to 35 U.S.C. §112(f), despite the fact that the control component limitation does not recite “means for.” Pet. 3 (citing Ex. 1012, 3–8; Ex. 1013, 13); PO Resp. 6–7. Indeed, the court in the Apple Litigation has concluded that the control component requirement is subject to 35 U.S.C. § 112(f), and has construed that requirement accordingly: Function: receiving control signals input to the oscillating resonant module; receiving outputs from the one or more sensors; controlling oscillation of the mass to produce a vibration response according to the received control signals by generating, using one or more of the received sensor outputs, control outputs to an actuator that drives the mass to oscillate. Structure: a microcontroller, a processor, a microprocessor, or a CPU that performs the algorithm shown in Figure 45 or the algorithm described in the corresponding text. See, e.g., 31:19–32:13, and equivalents thereof. Ex. 2001, 10; Ex. 2002, 40. Because of the Apple Litigation record, Petitioner presents its challenges in the alternative, first applying a plain meaning approach to the control component requirement, and also analyzing the requirement under the construction adopted in the Apple Litigation. Pet. 3–5. We adopt the court’s construction in the Apple Litigation. 35 U.S.C.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) “would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co., 550 U.S. at 419.” slip op. at 22
Patent outcomesUS 11,152,882 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,152,882 - Micron Technology, Inc. v. Yangtze Memory Techonologies Company, Ltd.All claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00789 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–6 and 11–13 are unpatentable as obvious over Tessariol; Petitioner did not show claims 1–6, 11, and 13 obvious over Park.
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) monolithic 3D structures and NAND memory devices,” or “an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 33. Petitioner further contends that a “POSITA would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. (citing Ex. 1003 ¶¶ 40–43). Patent Owner states that it does not object to the definition of a POSITA proffered by Petitioner. PO Resp. 13 (citing Pet. 33). In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 5–6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’872 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Read as a whole, the Specification supports the conclusion that a “dummy source structure” does not function as a source for the memory cells. Dummy source structures are variously described as being (1) electrically separated from the conductive layers of the memory stack, (2) used to laterally separate 3D memory device 100 into multiple memory regions, (3) used as a mechanical support structure, and (4) used as an interconnect to peripheral devices. None of these functions are directed to sourcing the memory cells. Moreover, the Specification describes a “source structure” as being connected with a channel structure of a memory string via a common source, such as a doped region in the substrate. That a dummy source structure does not function as a source to the memory cells is consistent with this description of source structure.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“After considering the complete record, we are persuaded that Petitioner sufficiently establishes that Tessariol teaches “at least two of the plurality of dummy source structures are of nominally equal lateral distances to the staircase contact” and “the plurality of dummy source structures are of nominally equal lateral distances to the staircase contact” as recited in claims 3 and 4. As an initial matter, we note that the ’872 patent defines “nominal/nominally” as follows: As used herein, the term “nominal/nominally” refers to a desired, or target, value of a characteristic or parameter for a component or a process operation, set during the design phase of a product or a process, together with a range of values above and/or below the desired value. The range of values can be due to slight variations in manufacturing, processes or tolerances. Ex. 1001, 4:9–15. Referring to Figure 1A, the ’872 patent also teaches that “[t]he four dummy source structures indicated by 146 may be spaced with nominally equal lateral distances to staircase contact 122. In other words, the four dummy source structures indicated by 146 may be evenly or Accordingly, we understand “nominally equal lateral distances” as used in claims 3 and 4 to include evenly or uniformly distributed structures. See Ex. 1003 ¶ 162 (Dr. Banerjee testifying that “[n]ominally lateral distances to, in the context of the ’872 Patent, includes being ‘evenly or uniformly distributed.’”). Tessariol’s Figure 15 illustrates that dummy structures 60 are evenly distributed around operating conductive vias 80. Ex. 1006, Fig. 15. The figure is consistent with Tessariol’s teaching that dummy-structure openings 56 (which become dummy structures 60) are “collectively arrayed in straight-line rows and columns” and “any alternate configuration may be used including, for example, staggering . . . alternating openings 54/56 in rows and/or columns.” Id. ¶ 37. We also credit Dr. Banerjee’s testimony that “it is best practice to use repeating patterns in semiconductive designs” and “a POSITA viewing the Tessariol figures would immediately interpret the figures to include this repeating pattern, in which these objects are of equal distance from the contact.” Ex. 1035 ¶ 85. We disagree with Patent Owner that Tessariol’s Figure 15 is insufficient to show that the dummy source structures are of nominally equal lateral distances to the staircase contact. The Federal Circuit has held that “the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art.” Nystrom v. TREX Co., 424 F.3d 1136, 1148 (Fed. Cir. 2005) (emphasis added). Here, claims 3 and 4 recite relative positioning (“nominally equal lateral distances”), not specific dimensions or proportions. Accordingly, we find Petitioner’s reliance on Tessariol’s Figure 15 to establish the placement particularly given Dr. Banerjee’s credible testimony regarding best practices in semiconductor design and that a POSITA viewing the Tessariol figures would have understood the objects are of equal distance from the contact. See Ex. 1035 ¶ 85. Based on our consideration of the entire record, and for the reasons set forth above, we determine that Petitioner shows, by a preponderance of the evidence, that claims 3 and 4 would have been obvious over the teachings of Tessariol.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s and Dr. Banerjee’s arguments are not persuasive. The arguments are circular as they assert that a POSITA would have understood that dummy source structure must have a complete path (i.e., not have a partial path, or dead-end) like a source structure because the source structure must have a complete path. See, e.g., Ex. 1035 ¶ 50. Similarly, the argument that the ’872 patent’s use of “connect” can only refer to an electrical connection between dummy source structure 246 and the channel structures is based on a figure depicting a source line as having an electrical connection and Dr. Banerjee’s unsupported assertion that the source line is a dummy source line (in some embodiments). Pet. Reply 9; Ex. 1035 ¶ 50. Again, Dr. Banerjee’s evidence is circular as it asserts the dummy source structure must have a complete path because the figure depicts a source line having a complete path, and therefore dummy source lines (in some embodiments) must have a complete path. Id. To the extent Dr. Banerjee asserts that it was “well known” that dummy source structures function as sources or source structures, any such assertion is not credible in light of his testimony that he had never heard of dummy source structures. See Ex. 1035 ¶¶ 17 (stating he “never heard of ‘dummy source structure’ before reading the ’872 patent”), 50 (stating “how these dummy source and source structures function as sources . . . was well known”). Thus, Petitioner’s assertion that the ’872 patent teaches a dummy source structure may connect to channel structures in the inner region is insufficient to show that the dummy source structure acts as a source to the memory cells.” slip op. at 14
Patent outcomesUS 10,861,872 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,861,872
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.