- PTAB · Jul 13, 2023 · IPR2023-00372 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all asserted § 103 grounds challenging claims 1–6, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 87. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 13. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’319 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’319 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–1388 (Fed. Cir. 1992)). As Patent Owner notes, the ’319 patent states that the “term ‘effectively exposed’ is used herein to indicate that the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Ex. 1001, 6:52–55; Prelim. Resp. 10–11. This language suggests that some electron flow in response to light is necessary for a region to be “effectively exposed.” But, as Petitioner notes (Pet. 32 n.3), the ’319 patent also says that [t]he exposed backside surface of the semiconductor substrate is then subjected to the material erosion process . . . to thin the semiconductor substrate until the semiconductor substrate is transparent to visible light, thereby effectively exposing the light-sensitive pixel diffusion regions of the image sensor circuit through the backside surface. Ex. 1001, 4:63–5:4. This suggests that merely the transparency of the overlying structure to visible light is sufficient for the underlying structure to be “effectively exposed.” Given the ambiguity in the present record, we do not agree with Patent Owner that the ’319 patent defines “effectively exposed” sufficiently clearly and precisely that we can conclude that it means “the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Instead, on the present record, we synthesize the different uses of the term within the specification to arrive at a preliminary conclusion that the term means “having a semiconductor substrate that is thin enough to be transparent to visible light, thereby rendering the pixels of the light sensitive pixel regions capable of generating electron flow in response to light (photons) passing through the substrate.” For purposes of this decision, we adopt this construction of the term “effectively exposed,” but we encourage both parties to address the construction of this term during trial. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine we need not expressly construe any other claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,169,319 - PTAB · Jul 12, 2023 · IPR2023-00369 · APJ Kristina M Kalan · IPR · Institution
The Board instituted review on all asserted grounds, finding a reasonable likelihood that TSMC would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 84. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 10. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’169 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’169 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art “would have been a person having a Master’s degree in electrical engineering, material science, physics, or other related disciplines with at least three years of industry experience in integrated circuit design, layout, packaging or fabrication” and that a “greater level of experience may compensate for less education and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 66–68). Patent Owner “reserves the right to dispute Petitioner’s definition of a POSA if an IPR is instituted.” Prelim. Resp. 7. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “does not believe the claim terms need to be construed to resolve the prior art issues presented in [the] Petition.” Pet. 10 (citing Ex. 1003 ¶ 70). Patent Owner “reserves the right to advance its own construction for any claim term should an IPR be instituted.” Prelim. Resp. 7. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,356,169 - PTAB · Jul 12, 2023 · IPR2023-00373 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, including claims 15–18 despite finding no reasonable likelihood of prevailing on those grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“argument. The Guidance Memo provides that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding [the relevant grounds].” Guidance Memo 3. This is because, “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding [the relevant grounds], it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. All the Guidance Memo requires, therefore, is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Id. at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We are not persuaded that Petitioner sufficiently shows a reason to combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
- Expert testimonyPetitioner expert discountedDecided for patent owner
“combine the teachings of Lee with those of Nagai. Petitioner directs us to the testimony of Dr. Giapis to support the argument that a person of ordinary skill in the art would have seen a benefit in constructing Lee’s image sensor using Nagai’s hydrogen diffusion control techniques. Pet. 69–70 (citing Ex. 1020 ¶ 151). Specifically, Dr. Giapis testifies that Lee’s image “sensors must store accumulated charge until it is read [and] hydrogen diffusion from the back-end processes will have an adverse effect on the front end, in particular on the sensor’s ability to retain charges.” Ex. 1020 ¶ 151. This testimony cites no sources or technical reasoning in support, and it replicates the Petition essentially word-for-word. Compare id. with Pet. 69–70. Thus, it is entitled to little or no weight. Xerox Corp. v. ByteMark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); 37 C.F.R. 42.65(a). Petitioner does not show sufficiently that a person of ordinary skill in the art would have had reason to combine the teachings of Lee with those of Nagai. Accordingly, Petitioner does not show a reasonable likelihood of prevailing on its argument that claim 15 would have been obvious in light of Nagai and Lee.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,431,455 - PTAB · Jun 16, 2023 · IPR2023-00206 · APJ Donna M Praiss · IPR · Institution
The Board instituted inter partes review of claims 1–12 and 14–24 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Brown and obviousness over Giacino and Brown.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’096 patent, and we institute inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In assessing whether to exercise the Board’s authority to deny institution under § 325(d), the Board considers a two-part analysis. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8–9 (Feb. 13, 2020) (precedential). First, the Board considers whether “the same or substantially the same” art or arguments were previously presented to the Office. Id. at 8. If either is met, the Board then considers whether the petition demonstrates that the Office “erred in a manner material to the patentability of the challenged claims.” Id. In applying the two-part framework, the Board considers several nonexclusive factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph).12” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have (i) a Bachelor of Science degree in food science, biology, chemistry, microbiology, or a related discipline, and (ii) a Master of Science degree or Ph.D. in food science or at least three years of experience working as a food scientist” and “could also be part of a team of food scientists, including flavor chemists.” Pet. 5 (citing Ex. 1003 ¶¶ 42–47). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states “[t]he terms of the challenged claims do not require express construction in order to reach a decision denying institution.” Prelim. Resp. 4. Nevertheless, Patent Owner asserts that Petitioner relies on an erroneous construction of “food flavor additive composition” to mean “each and every food item of every kind simply because it will have some flavor” and “any component of a food product . . . [that] has flavor and is added to the food product.” Id. at 4–5, 6. Patent Owner asserts “a food flavor additive composition is an additive that varies or adjusts the flavor and/or aroma profile present in a consumable food product.” Id. at 7. Patent Owner contends “the ’096 patent describes food flavor additives that are added to replica products to change the product’s flavor and aroma profile ‘before, during, or after cooking of the consumable food product.’” Id. (quoting Ex. 1001, 3:54–56). On the present record, it is not clear to us what distinction Patent Owner seeks to make between an “additive that varies or adjusts the flavor . . . in a consumable food product” and a “component of a food product . . . [that] has flavor and is added to the food product.” We determine we need not explicitly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375. We invite the parties to address the construction of “food flavor additive composition,” as necessary, during the course of this proceeding.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,943,096 - PTAB · Jun 15, 2023 · IPR2023-00214 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.11 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date12 of the challenged patent.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Conclusion Factor one weighs strongly against exercising our discretion to deny institution, factor three weighs against exercising our discretion to deny institution or is neutral, factors six and seven are neutral or weakly favor discretionary denial, and the remaining factors are neutral. The balance of the General Plastic factors thus weighs against exercising our discretion under § 314(a) to deny institution. Accordingly, we decline to exercise our discretion to deny institution based on the General Plastic factors.” slip op. at 24
- Parallel petitionsDecided for petitioner
“Here, we decline to exercise discretion to deny this Petition based upon multiple Petitions for three reasons. First, as we explain in Section III(H) of this decision, the Petition is strong on the merits, and Patent Owner has, at this stage, offered little argument refuting the merits. Second, Patent Owner’s burden to respond to both petitions is lessened by Patent Owner’s familiarity with much of the prior art at issue. As Patent Owner emphasizes, all or nearly all of the art in the Petitions was previously raised either during prior examination or in other inter partes reviews. Indeed, it seems likely that, if the Cree IPR (or related follow on IPRs) proceeds to a decision on the merits, there may be little left unresolved for the instant Petition. Institution here, however, provides Petitioner an opportunity to challenge the ’961 patent based on Krames in the event that the IPR based on Cree does not reach a decision on the merits. Third, while the two petitions present different invalidity grounds (addressing the same claims) and, as explained above, are not wholly redundant, the two parallel petitions have a great deal of overlap. Prelim. Resp. 26 (arguing that the two petitions are “redundant”). Because portions of the petitions are similar, this also reduces Patent Owner’s burden to respond. Thus, based on the totality of specific circumstances unique to these two petitions, we decline to exercise discretion to deny institution based on parallel petitions.” slip op. at 25
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 21, 25–29, 36, 40–43, 47– 49, and 52–57 of the ’961 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 21, 25–29, 36, 40–43, 47–49, and 52–57 of the ’961 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · Jun 15, 2023 · IPR2023-00213 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 25–29, 36, 40–43, 47–49, and 52–57 on all asserted grounds, finding a reasonable likelihood of success on the §103 obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion as to claim 21 Based on the evidence in the present record, we determine that Petitioner has shown sufficiently for purposes of this Decision that the combination of Begemann, Bogner, and Sugiura teaches or suggests all elements of claim 21 and that Petitioner sufficiently shows that a person of ordinary skill in the art would have had reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine Petitioner has established a reasonable likelihood of prevailing in showing that claim 21 is unpatentable over the combination of Begemann, Bogner, and Sugiura. b. Dependent Claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 Petitioner accounts for the limitations recited in claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 (which depend from claim 21). Pet. 6, 51–71. Petitioner shows sufficiently for purposes of this Decision that each element of claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 is taught or suggested by the combined teachings of Begemann, Bogner, and Sugiura and shows reason to combine the references’ teachings with rational underpinning and reasonable expectation of success. Thus, we determine that Petitioner has sufficiently established a reasonable likelihood of establishing claims 25–29, 36, 40, 42, 43, 47–49, and 52–57 are obvious in view of Begemann, Bogner, and Sugiura.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We do not agree, however, that Petitioner fails to show material error. Rather, Petitioner shows sufficiently that the outcome of the reexamination hinged on Patent Owner’s representation that the prior art did not teach LED chips “configured to output light at greater than about 40 milliwatts.” Pet. 19 (quoting Ex. 1014, 238–239 (Patent Owner’s statement in file history); see also Ex. 1014, 159 (examiner explaining that claims are found patentable based on Patent Owner’s argument that the “greater than about 40 milliwatts” recitation is not “taught or suggested by any reference currently relied on”). Petitioner then explains in detail why Patent Owner’s representation, and the Examiner’s resulting conclusion, was in error. Pet. 20–24. Petitioner’s explanation as to why Begemann, the cited art, actually taught the “greater than about 40 milliwatts” recitation is supported by the evidence of record sufficiently to demonstrate a reasonable likelihood of success at trial. See, e.g., Ex. 1002 ¶¶ 85–93, 141–144 (Petitioner’s witness, Dr. Jokerst, explaining why the references suggest the “greater than about 40 milliwatts” recitation when a correct calculation is applied).” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the presently cited art at the time a different petitioner filed the Cree IPR. Prelim. Resp. 27. We note, however, that this factor also includes considering whether the prior art relied on in the later petition “could have been found with reasonable diligence.” General Plastic, slip op. at 20. Although the cited references easily could have been found by reviewing the ’961 patent’s file history, it is less clear that the key alleged error in Patent Owner’s representations concerning the teachings of those references would have been readily apparent. As such, this factor is neutral. 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; Patent Owner argues that Petitioner used the Board’s institution decision (instituting trial) in the Cree IPR as a roadmap for its petitions. Prelim. Resp. 27–28. Patent Owner, however, presents no factual evidence merely result from the strength of references raised in prior reexamination rather than copying from one petition to another. The record lacks evidence directly establishing how or why Petitioner came to select the evidence the Petition relies upon, and we decline to speculate. to support this point, for example, instances in the Petition that facially support a finding that the arguments presented in the Petition track the analysis in the Board’s prior institution decision. Moreover, we agree with Petitioner that the road-mapping concern is either not relevant or is less relevant when the earlier IPR was instituted. Reply 1–2; see also General Plastic, slip op. at 17–18 (explaining that factor 3 is directed to road-mapping concerns). This is not a multiple-bites-of-an-apple situation where the second bite is modified after the first bite fails. This factor weighs against discretionary denial or is neutral.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts here are analogous to those of Hulu, LLC. The Bogner reference provides the indicia at bottom left corner of its first page. Ex. 1007, 143. The indicia states: “Part of the SPIE Conference on Light- Emitting Diodes Research, Manufacturing and Applications III • San Jose, California • January 1999 SPIE Vol 3621 • 0277-786X/99/$10.00.” Id. The January 1999 date being printed adjacent to the name of a particular conference and San Jose, California suggests that the paper was presented at the 1999 conference. The “99” within 0277-786X/99/$10,00 indicates a 1999 publication, and the “$10.00” suggests public availability at the price of ten dollars in 1999. The indicia also suggest that the paper was published by an established publisher—SPIE (the international society for optics and photonics). As further evidence, Petitioner includes in the record a page from the SPIE website that appears to be from October 12, 2022. Ex. 1007, 1. The page indicates Bogner was published “14 April 1999” in “SPIE Proceedings Vol. 3621.” Id.10 This information is consistent with the indicia on the first page of the paper itself. The evidence, in total, supports Petitioner’s contention that the paper was presented at a conference in January 1999 and then published within SPIE Proceedings Volume 3621 in April 1999–– absent contrary evidence, which Patent Owner does not advance at this stage of the proceeding. As in Hulu, LLC, the Bogner reference’s indicia provide some evidence of printed publication status. The page from the SPIE website provides further evidence. Thus, given the record as a whole, which contains some evidence that Bogner was a printed publication as of 1999 and no evidence to the contrary, and in view of the Hulu LLC precedent, we determine that Petitioner has established at this stage of the proceeding a reasonable likelihood that the Bogner reference is a printed publication that was publicly accessible before the critical date11 of the challenged patent.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,465,961 - PTAB · May 15, 2023 · IPR2023-00073 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the asserted obviousness combinations.
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. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’879 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“’879 patent would understand the term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“adhesion layer” is recited only in the challenged independent claims and in no other claims of the ’879 patent. See Ex. 1001, 13:45–16:65. And each of the independent claims recites “forming” an “adhesion layer” “on a back surface” of a “wafer.” Id. at 13:47–49, 13:54–56, 15:4–6, 15:45–47, 16:48– 50, 16:56–58. In view of this claim language, we construe the relevant claim language “forming an adhesion layer on a back surface of a wafer” as a whole, not just a single term “adhesion layer” in isolation from the rest of the claim language. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“[T]he claim limitation, as a whole, [] must be considered in claim construction.”); United States v. Telectronics, Inc., 857 F.2d 778, 781 (Fed. Cir. 1988) (holding that district court’s interpretation of the term “avoid” without regard to the rest of the limitation was error); see also Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (“[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”); IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.” (emphasis added)); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Considering the claim language, the Oxford English Dictionary defines “form” as “[t]o construct, frame; to make, bring into existence, produce.”4 Thus, the plain meaning of the claim term to “form[] an adhesion layer on a back surface of a wafer” is “to construct or make an adhesion layer on a back surface of a wafer.” At this time, we do not perceive anything in the claim language that requires any specific method to construct an adhesion layer on a wafer surface. Thus, at least based on the claim language, we are not persuaded at this time that the challenged claims require adhering a pre-formed adhesion layer to a surface of a wafer, as Patent Owner contends. Citing the Specification of the ’879 patent, Patent Owner contends that the recited “adhesion layer” is “a pre-formed layer that is adhered” to the back surface of a wafer because the ’879 patent describes that the “[second semiconductor’s] back surface is adhered to the thermo-compression sheet 6.” Prelim. Resp. 12 (citing Ex. 1001, 6:48–52). The language cited by Patent Owner comes from the ’879 patent’s description of Figure 1, which shows “a semiconductor device in accordance with the first embodiment” of the ’879 patent. Ex. 1001, 5:34–36 (emphasis added), 6:37– 52. A particular embodiment appearing in the written description is generally not incorporated into a claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is improper to read limitations from a preferred embodiment described in the specification— slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,352,879 - PTAB · May 15, 2023 · IPR2023-00072 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Micron would prevail on its asserted obviousness grounds.
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. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“words” and because “the numerous (8) independent claims recite two very different interconnection techniques for stacked multichip modules.” Id. Petitioner represents that The current Petition challenges independent claims 1, 2, 23, 24, and 30 in addition to dependent claims 6-7, 9-10, 12-13, 14-19, 25-26, and 32—all of which recite a wire bond interconnection technique. The first Petition (IPR 2023-00071) seeks cancellation of independent claims 3, 27, and 31 in addition to dependent claims 4-5, 8, 11, 20-22, 28, 29, and 33—all of which recite using a combination of flip-chip and wire bond interconnection techniques for stacked multichip modules. Id. at 2–3. Petitioner further states that “each claim is challenged only once.” Id. at 3. Patent Owner does not dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)2 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2001 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that a person of ordinary skill in the art reading the ’806 patent would understand the claim term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16–17 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner contends that the term “adhesion layer” recited in the challenged independent claims should be construed to mean “a pre-formed layer that is adhered.” Prelim. Resp. 13–15. Patent Owner argues that Ball, Fogal, and Mostafazadeh do not teach “adhesion layer” under Patent Owner’s proposed construction of the term. See, e.g., id. at 16–24. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “adhesion layer” for purposes of this Decision because, as discussed in Section III.D.5 below, Petitioner shows sufficiently that the asserted combination of Ball, Fogal, Mostafazadeh, and the knowledge of a skilled artisan teaches or suggests “adhesion layer” even under Patent Owner’s proposed claim construction. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - PTAB · May 15, 2023 · IPR2023-00071 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 3–5, 8, 11, 20–22, 27, 28, 31, and 33 on all petition grounds, finding a reasonable likelihood of unpatentability under the asserted obviousness combinations.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)3 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Considering the claim language of claim 3 as a whole, see Hockerson- Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”), we agree with Petitioner that claim 3 does not recite when or how the “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Patent Owner appears to argue that the “first semiconductor chip” with “an adhesion layer adhered to its back surface,” as recited in claim 3, must have been created “in advance,” e.g., by a wafer-level fabrication process, before the chip is mounted in the recited semiconductor device. Patent Owner argues that the patentee recognized that applying a paste or thermo-compression sheet on individual chips during packaging (i.e., mounting of the chips during packaging) caused the “overflow” and “gap” problems. Sur-reply 2 (citing Ex. 1001, 2:16–24, 2:44–46). According to Patent Owner, “the patentee further recognized that merely switching to a pre-formed solid sheet alone would not solve the problem” because using a thermo-compression sheet on an individual chip for mounting during packaging “results in the same problem as using an adhesive due to the inability to place the chip accurately on the thermo-compression sheet.” Id. at 2–3 (citing Ex. 1001, 2:49–56). Thus, Patent Owner argues the ’806 patent proposes a two-fold solution: “Use a preformed solid sheet and attach that sheet to the back surface of the wafer first” during the wafer fabrication process “before cutting and placing the chip” in a multichip package. Id. at 3 (underlined emphases added). Patent Owner asserts, therefore, “a first semiconductor chip having . . . an adhesion layer adhered to its back surface,” as recited in claim 3, must have a pre-formed adhesion layer adhered to its back surface “in advance” before mounting in a multichip package, such as a solid thermo-compression sheet applied to the backside of a wafer during wafer-level fabrication processing before the chips are produced by dicing. Prelim. Resp. 13–14; Sur-reply 2–3. We note, however, that claim 3 does not recite a “wafer,” placing “an adhesion layer on a back surface of a wafer,” or producing semiconductor chips by dicing or cutting the wafer. See Ex. 1001, 14:14–32. Nor does the claim recite any limitation indicating when or how an “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Thus, at least based on the claim language, claim 3 does not require the recited semiconductor chips with an adhesion layer to have been produced “in advance” before being used for mounting in the recited semiconductor device. Nonetheless, for purposes of this Decision, we need not and do not” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham - PTAB · May 12, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all petition grounds, and granted …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 10–116, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 5. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the supporting declaration of Dr. Bretschneider submitted by Feit Electric adopts the opinions of Cree Lighting’s expert, Dr. Lebby, in full, with minor clarifications . . . that are immaterial to the broader analysis.” Id. at 8, n. 1; see also Ex. 1021 (declaration of Dr. Bretschneider). Petitioner further states that it will rely on the declaration of Dr. Bretschneider “only in the event that Cree Lighting is terminated from the proceedings.” Mot. 8, n. 1. Patent Owner waives its preliminary response, and it does not dispute Petitioner’s arguments or evidence. See generally Waiver.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that its Petition is “essentially a copy of the Cree Lighting Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR.” slip op. at 6
NonePatents in suitUS 6,465,961
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.