- PTAB · May 21, 2024 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding compelling evidence that Hirler anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may institute review, however, only upon a determination that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for reasons set forth below, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Id. at 5–6. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We also apply additional guidance issued by the Director on the application of the Fintiv factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022).12 The Fintiv Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “the sidewalls of said trenches in said base layer” Petitioner requests an express construction of a single claim term, namely, the term in claim 1 that specifies “the sidewalls of said trenches in said base layer.” Pet. 17. We agree with Patent Owner that no express construction of that term is necessary to resolve whether to institute review. See Prelim. Resp. 4 (arguing that this term “has no apparent relevance to any of the asserted prior art grounds”). We thus decline to expressly construe the term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (claim terms are construed only to the extent necessary to resolve the controversy).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, on this record, we preliminarily determine that the phrase “lateral contact layer” does not require “a dopant concentration between P and P+ (P* doping) for an N-channel MOSFET or between N and N+ (N* doping) in a P-channel MOSFET.” Prelim. Resp. 8. b. Dopant Implantation We next consider Patent Owner’s view that “the lateral contact layer” of claim 1 requires “a region of dopant which is implanted into sidewalls of the source contact trenches.” Prelim. Resp. 8. We discern no words in claim 1, and the parties identify none, that even remotely touch upon a requirement related to dopant implantation. See id. at 7–8; Ex. 1001, 5:37– 6:17 (claim 1). Patent Owner argues that the written description “makes clear that the lateral contact layer is implanted into the sidewall of the source contact trenches.” Prelim. Resp. 7. However, by way of support, Patent Owner again merely directs the Board to written descriptions of embodiments of the invention. See id. at 7–8 (highlighting portions of the specification that describe embodiments of the invention). Patent Owner does not argue that the phrase “lateral contact layer” is” slip op. at 12
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,629,634 - PTAB · May 21, 2024 · IPR2024-00094 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–6 and all asserted grounds, finding a compelling and reasonably likely obviousness challenge to claim 1 over Kobayashi and Hshieh.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”), “at the filing date of the ’409 [p]atent[,] would have a master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶ 52). Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art. See generally Prelim. Resp. 6 Hshieh et al., US 5,763,914, issued June 9, 1998. Ex. 1006 (“Hshieh”). We adopt Petitioner’s proffered level of ordinary skill in the art, which is supported by declaration testimony and consistent with the ’409 patent and prior art of record. See Ex. 1001, 1:6–3:8 (describing the invention and related art in terms of integrated circuit design and fabrication).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Based on the preliminary arguments and evidence, we disagree with Petitioner’s proposed construction requiring the corners to be rounded via a particular process because it improperly imports a process of manufacture from the Specification into apparatus claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019) (citing Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372–73 (Fed. Cir. 2000) (“Generally, ‘[a] novel product that meets the criteria of patentability is not limited to the process by which it was made.’”)). We also preliminarily disagree with Petitioner’s assessment of the prosecution history, i.e., that the claims were amended to distinguish the claimed rounded corners from 7 Pfirsch et al., US 6,541,818, issued April 1, 2003. Ex. 1011. Pfirsch’s rounded corners. Indeed, both the Examiner found and Patent Owner admitted that Pfirsch has the recited “rounded corner[s].” See Ex. 1002, 237, 302. Patent Owner appears, at this stage, to be correct that the claims were amended to include a “circular” contact to distinguish over Pfirsch’s square contact. See id. at 295, 302.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree at this stage. Petitioner’s rationale for combining Kobayashi with Hshieh is not solely based on Hshieh’s top view rounding being well known. Rather, Petitioner’s rationale is clearly based on express teachings in Hshieh about the benefits of top view rounding. See Pet. 54, 59 (citing Ex. 1006, 5:3–17, Figs. 6A–8B; Ex. 1003 ¶ 137); Ex. 1003 ¶¶ 122, 133. For example, Petitioner and its declarant refer to Hshieh’s teaching at column 5, lines 3–17, which states, “[i]n order to prevent the corner vulnerability where punch through weak points may be formed at the sharp corners due to a three-dimension diffusion effect . . . , the sharp corners of the polysilicon openings can be either blunted or rounded.” See Pet. 59; see Ex. 1003 ¶ 137. Accordingly, at this stage, we find that Petitioner has sufficiently articulated a motivation to combine the top view rounding of Hshieh with Kobayashi.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundInstituted
“Next, Patent Owner argues that Hshieh teaches non-orthogonal parallelogram-shaped cells to increase cell packing density and “specifically identifies square cell configurations as having disadvantageous packing densities.” Prelim. Resp. 23. Patent Owner argues that Hshieh therefore “plainly teach[es] away from combining Hshieh with Kobayashi in the manner claimed.” Id. We do not agree at this stage. Although Hshieh teaches that non- orthogonal cells are preferable over square cells, Patent Owner has not pointed out anything in Hshieh that would “criticize, discredit, or otherwise discourage” modifying Kobayashi’s square cells to have rounded corners. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention . . . .”). Thus, we find nothing in the preliminary record to suggest that Hshieh teaches away from the combination.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,812,409
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.