- Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision
Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3-Al interface at the surface. No buildup of Al2O3 is seen at the Al- Si interface.” Ex. 1121, 5. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross-examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25
Patent outcomesUS 10,090,395 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,090,395 - Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentablePTAB · Jan 18, 2022 · IPR2020-01102 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–5, 15–20, 30, and 31 are unpatentable as obvious over Qualcomm and TS25.322; claims 6–14 and 21–29 were not shown unpatentable. Substitute claims 32–35, 45–49, 59, and 60 were denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have a degree in electrical engineering or similar discipline, with at least three years of relevant industry or research experience in telecommunication, including familiarity with cellular communications technologies,” that this person “would also have familiarity with WCDMA,” and that “[t]his definition is approximate,” as “more education may substitute for industry experience or vice versa.” Pet. 12–13 (citing Ex. 1007 ¶¶ 30–34). We adopted Petitioner’s proposal at institution. See Decision 7–8. In its Response, Patent Owner “proposes that a person having ordinary skill at the time of invention—August 23, 2005—in the relevant art would be one with a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field” and that “[a] combination of more experience in the field and less education or more education and less experience in the field would also suffice.” PO Resp. 8 (citing Ex. 2001 ¶ 27). Patent Owner asserts that “[a]lthough [its] proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties do not argue that the formulation of the level of skill in the art affects any issue in this case, and we maintain our adoption of Petitioner’s formulation, which we find to be generally consistent with the disclosures of the ’443 patent and the prior art, and which includes that “more education may substitute for industry experience or vice versa.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“length indicator” to mean “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Prelim. Resp. 9–10. We agreed with Patent Owner that the specification’s description of a single length indicator that conveys both types of information and the arguments made during prosecution that the claims required a “single LI” or “the same length indicator” to include both types of information were sufficient to support a construction that required a single length indicator to include both pieces of information. See Decision 9. Although it did not propose a construction in the Petition, Petitioner now argues that “the claim language uses the indefinite article ‘a’ to modify ‘length indicator’” and that “[p]recedent is well settled that ‘an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Pet. Reply 5 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). While we agree with Petitioner that “a” may mean “one or more,” that simply means that the addition of more length indicators would not be excluded from the scope of the claim. Petitioner does not explain, and we do not see, how that affects the meaning of “length indicator” itself and, for the reasons argued by Patent Owner and adopted at institution, we maintain the earlier construction of “length indicator” as “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Decision 8; Prelim. Resp. 9–12; PO Resp. 10–13. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also observe that, although Patent Owner characterizes this issue as one based on “teaching away” (see, e.g., PO Resp. 3; PO Sur-Reply 15– 16), the argument is not about teaching away because Patent Owner is not pointing us to any specific teaching in the prior art, or elsewhere, that would counsel against the proposed modification. Patent Owner is not arguing that something in the prior art disparages or discourages the use of one bit of an LI as a flag. Instead, Patent Owner is arguing that one of skill in the art would not pursue the Qualcomm approach because to do so would mean accepting other drawbacks that would flow from the use of the flag. In any event, we credit Patent Owner’s evidence that dedicating a bit of the LI for use as a flag would reduce the length that could be represented by the remaining bits of the LI and cause SDUs to be divided into more PDUs. See, e.g., Ex. 2005 ¶¶ 30, 32. However, the record also shows that use of the flag would provide a specific advantage, as described in Qualcomm. See Ex. 1006, 3; Ex. 1007 ¶ 253. This is the motivation advanced by Petitioner which, notably, Patent Owner does not dispute. We conclude that, even if Patent Owner is correct that the proposal in Qualcomm would reduce the permitted PDU size from 128 octets to 64, the change would merely be something a skilled artisan would need to weigh against the advantages that the Qualcomm technique would provide. Patent Owner may be correct that the reduced lengths would, in the end, render the modified system unsuitable for certain applications or for adoption in a standard. That would not, however, make the modification nonobvious, particularly where the exact change proposed in the combination was suggested by individuals working in the field, as evidenced by Qualcomm itself.7 The record shows that at least some of those working in the field, at the time of the invention, believed that the advantages of Qualcomm’s approach would outweigh the reduced lengths.” slip op. at 20
- BurdenMixed
“In TS25.322, the value “0000000” is a predefined, special value used to indicate that “[t]he previous RLC PDU was exactly filled with the last segment of an RLC SDU and there is no ‘Length Indicator’ that indicates the end of the RLC SDU in the previous RLC PDU.” See Ex. 1005, 36–37. However, although Qualcomm specifically contemplates implementing its flag scheme by “[r]e-arrang[ing] special LI values as they are now coded on less number of bits” (Ex. 1006, 4), the Petition did not argue a combination that includes modification of the special LIs for the independent claims. Instead, Petitioner relied on Qualcomm’s proposal to modify ordinary LIs that indicate the end of SDUs. See, e.g., Pet. 71–72 (describing and illustrating modification of the LI that identified the end of SDU 1: “[t]he green modified LI indicates that a first data octet of PDU is a first octet of SDU1 and another octet of the PDU is the last octet of SDU1”); Ex. 1007 ¶¶ 261–262. Petitioner’s argument with respect to these claims is thus not consistent with the argument it advanced for the independent claims from which these claims depend. Petitioner cannot reasonably rely on one type of prior art LI as the “length indicator” of claim 1, but then shift to a different type of prior art LI when addressing the very same “length indicator” recited in a dependent claim. Moreover, Petitioner fails to explain how or why the special LI “0000000” that is used to indicate the layout of the previous PDU could reasonably be used to also indicate the layout of the current PDU in which the LI appears. For example, if the previous PDU did not meet the condition identified by the “0000000” special value, then the LI would not appear in the next PDU even if that next PDU had a first SDU that ended in that PDU. For these reasons, Petitioner has not provided sufficient explanation or argument to establish obviousness of claims 6 and 21.9” slip op. at 28
Patent outcomesUS 7,894,443 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,894,443 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01279 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3 and 13 are unpatentable as anticipated by Goodnick; claim 4 is unpatentable as obvious over Goodnick and Jammy. The other challenged claims were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“resistivity” and “specific contact resistance” to be interchangeable. Dec. to Inst. 12. Neither party disagrees with this construction, and we apply the same construction for purposes of the Decision.” slip op. at 8
- Expert testimonyMotion to exclude, deniedDenied
“Although Patent Owner contends Dr. Goodnick’s declaration did not open the door for general questioning about metal oxides (PO Opp. 2–3), we agree with Petitioner that the proper scope of cross examination includes Dr. Goodnick’s understanding of what constitutes a distinct layer. A primary issue raised by Patent Owner against Petitioner’s challenge that Goodnick anticipates is that, notwithstanding its use of the term layer, Goodnick does not teach distinct layers that are required by the claim. See Section VI.B. One of those layers is a metal oxide layer (Ex. 1101, claim 1), in particular a titanium oxide layer (claim 6). In view of Dr. Goodnick’s checkerboard analogy in his declaration, it was proper for Petitioner to question Dr. Goodnick about the extent of materials in the checkerboard. Both parties argue there may be implications of Dr. Goodnick’s testimony for purposes of infringement litigation. See Pet. Opp. 4–6; PO Reply 3–4. We do not address those implications. The issue before us is whether Goodnick would have taught or suggested to a person of ordinary skill the limitations of the claims, which the parties agree include distinct layers of metal oxide and other semiconductor oxide. See Section VI.B. As Dr. Goodnick testified that his article did not teach such distinct layers, it was proper for Petitioner to explore Dr. Goodnick’s views concerning the composition of a layer during cross examination. In consideration of the above, Patent Owner’s motion to exclude the Goodnick Metal Oxide testimony is denied.” slip op. at 48
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taken in context, we agree that a person of ordinary skill would have understood Goodnick to refer to Al2O3 as a distinct layer. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3- Al interface at the surface. No buildup of Al2O3 is seen at the Al-Si interface.” Ex. 1116, 953. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 5–6 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7). In view of, inter alia, Dr. Goodnick’s cross examination testimony, we are persuaded by Dr. Schubert’s testimony that a person of ordinary skill would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173 ¶¶ 85–98.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“that “the semiconductor region comprises an n-typed doped source or drain of a transistor.” Acknowledging that Goodnick “does not expressly disclose that its n-doped silicon semiconductor region ‘comprises an n-type source or drain of a transistor,’” Petitioner cites Jammy as disclosing this feature. Pet. 27. According to Petitioner, a person of ordinary skill would have combined the teachings of Goodnick and Jammy because Goodnick describes contact metallization processes for semiconductor devices and Jammy describes a semiconductor device. Id. at 28. Patent Owner asserts that Petitioner’s challenge to claim 4 based on the combined teachings of Goodnick and Jammy fails because it is premised on Goodnick teaching a stratified layer of Al2O3 distinct from SiO2. PO Resp. 60. As discussed above, we find that a person of ordinary skill would have understood Goodnick to disclose this feature. See Section VI.B. In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill would have had reason to combine the teachings of Goodnick and Jammy and that the combined teachings of Goodnick and Jammy would have suggested the limitations of claim 4 to a person of ordinary skill in the art.” slip op. at 24
Patent outcomesUS 9,905,691 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,905,691 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01206 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–4, 13, 20, 22, and 25 were held unpatentable as anticipated by Grupp ’483; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed
“mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 22
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide 734; see also 37 C.F.R. § 42.23(b). Here, 4 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of titanium” recited in claims 6, 8, 10, 11, and 14–16 was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019). Accordingly, we will not consider the breadth challenge to oxides of titanium that Petitioner presented for the first time in its Reply.” slip op. at 25
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner’s expert, Dr. Schubert, identifies a large number of metal oxides and multiple metal oxides that is expanded by multiple equilibrium species and notes that the metal oxide genus would be even further expanded to include non-equilibrium species. Ex. 1047, Schubert Decl. 2 ¶¶ 18–22. Dr. Schubert further emphasizes the significant variation in physical and chemical properties of such metal oxides. Id. at ¶¶ 27–51. Much of Dr. Kuhn’s analysis is premised on her assessment of the mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 21
- ExcludeOther
“Patent Owner’s Motion to Exclude is moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 6, 8, 10–12, 15–19, 26–29. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre-2011 priority applications for the oxide of titanium class recited by those claims. Pet. Reply7–12. Because we decided not to consider that belated challenge (see Section III.E.1.b), the Motion to Exclude is moot.” slip op. at 47
Patent outcomesUS 9,905,691 mixed§ 102 anticipationPatents in suitUS 9,905,691
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.