- Arista Networks, Inc. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103; claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“For reasons explained in the Petition and Petitioner’s Reply, we agree with Petitioner that the Baker–Wright–Holender ’699 combination teaches summing the two bandwidths determined in “allocating” steps 12.5 and 12.7 to determine a total allocation for each of the physical links—motivated by the known need to ensure that bandwidths do not exceed the available physical link capacity. We disagree with Patent Owner that Holender ’699’s discussion of summing is merely describing a physical constraint. Holender ’699 teaches normalizing the logical link capacities, which requires summing the logical link capacities. See Ex. 1007, 8:38–51. We credit Dr. Houh’s testimony that this “confirms that [Holender ’699’s] teachings about summing are not simply ‘explaining a physical constraint,’ but actually performed.” Ex. 1036 ¶ 61. Holender ’699 refers to capacities 𝐶𝐶𝑗𝑗 as “logical link capacities for each logical link j over all logical networks. Ex. 1007, 6:52–55. But when mapped to physical links, Holender ’699 denotes capacities 𝐶𝐶𝑘𝑘𝑘𝑘 as “capacities of the logical links [𝑙𝑙] that need capacity on the k:th physical link.” Ex. 1007, 8:38–43. In other words, they are the capacities, or bandwidths, allocated to each physical link 𝑘𝑘 for implementing associated logical link 𝑙𝑙. See also id. at 6:60–67 (describing a matrix designed to indicate “if logical link j needs capacity on the k:th physical link.”).” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“necessary because the construction does not resolve any contested issues. Pet. Reply 8–10 (citing Ex. 1005 ¶¶ 16, 62; Ex. 1006 ¶¶ 5, 24; Ex. 1003 ¶ 96; Ex. 1036 ¶¶ 49–50). But if a construction is necessary, Petitioner argues that the we should construe in response to as “using,” consistent with how the claimed invention is described in the ’431 patent. Id. at 10–11 (citing Ex. 1001, 2:52–6:10, 8:52–9:2; Ex. 1036 ¶¶ 7–11). Petitioner disagrees that the term means “based on” because limitation 1.3 uses the phrase based on, suggesting that the applicant made a conscious decision to use different language in limitation 1.5. Id. at 11 (citing Ex. 1036 ¶ 11). Patent Owner responds that its two proposed constructions are synonymous, and argues that Petitioner agrees that in response to encompasses “using” or “using information from.” PO Sur-reply 8 (citing Ex. 1001, 2:22–26). Patent Owner contends that its proposed construction resolves a controversy because in Patent Owner’s view, the Baker–Wright combination does not use information from the recited mapping to allocate bandwidth. Id. at 9–12 (citing Ex. 1006 ¶¶ 5, 17, 24; Ex. 2009, 52–56; Ex. 2008 ¶¶ 62–76). Similarly, Patent Owner contends that Holender ’699 does not teach mapping. Id. at 12–13 (citing Ex. 1007, 3:15–17; Ex. 2008 ¶¶ 89–92). We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is in controversy. Thus, we need not construe the term for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s arguments persuasive that Baker teaches allocating bandwidth as part of its resources and that, in light of Wright and Holender ’699, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. Holender ’669 provides further supporting disclosure. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 33; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 9–12 (citing Ex. 1003 ¶¶ 42–46, 48; Ex. 1021 ¶¶ 100–101). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 11–12 (citing Ex. 1003 ¶ 47; Ex. 1021 ¶¶ 102–104).” slip op. at 34
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentablePTAB · Jun 11, 2024 · IPR2023-01193 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1, 4, 5, 7, 9, 10, 12, and 14–16 are unpatentable as obvious under § 103(a) over the listed Jiang-based combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with . . . two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with . . . four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). Zentian does not contest Apple’s proposed definition of the level of ordinary skill. PO Resp. 5. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–8:10.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian does not contest these arguments or propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find Apple’s arguments persuasive that a person of ordinary skill in the art would have understood Jiang’s pruning technique not to rely on feedback, particularly because Jiang makes no mention of feedback, and Jiang as a whole appears consistent with Apple’s theory that Jiang does not teach feedback-based pruning. See, e.g., Ex. 1004, 2:5–7, 8:52–64, 10:65– 11:15. We credit Mr. Schmandt’s testimony and supporting evidence that “[e]ven though Jiang still describes calculating all scores initially (for each state for example), Jiang explains that pruning thereafter saves on computational resources.” Ex. 1003 ¶ 194 (citing Ex. 1004, 10:65–11:25). We find this testimony more persuasive than Mr. Anderson’s contrary testimony which does not credibly find support in the text of Jiang. See Ex. 2020 ¶¶ 57–71. We also disagree that Apple’s arguments that Jiang’s distance calculations do not rely on pruning are untimely. PO Resp. 19. The Petition argues that Jiang teaches calculating distances, “namely a score for each phoneme branch of the prefix tree.” Pet. 21 (citing Ex. 1004, 8:29–33). Also, Mr. Schmandt clearly opined, in his initial declaration submitted with the Petition, that “each phoneme branch is scored” in Jiang’s search tree. Ex. 1003 ¶ 149. Thus, Zentian had clear notice in the Petition of Apple’s argument that Jiang performs distance calculations for the entire search tree. Apple’s later argument that this process does not necessitate feedback is a natural consequence of its argument in the Petition, and is not untimely.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“(1) Apple’s Proposed Combination According to Apple, Brown teaches that processing stages in a speech-recognition system may be pipelined such that “as the frames of data are generated, the data is processed from one stage to another so that the operations are synchronized with the rate of frame generation.” Pet. 44–45 (citing Ex. 1036, 3:32–48; Ex. 1003 ¶¶ 206–209). Apple contends that a person of ordinary skill in the art would have had reason to modify the combination of Jiang and Baumgartner by pipelining data sent from the CPU to the SLA and then back to the CPU because “[p]ipelining data offered numerous well-known advantages including greater throughput of the processor, improved performance, decreased cost, and simplified programming.” Pet. 45 (citing Ex. 1003 ¶ 210). Apple also argues that a person of ordinary skill in the art “would have realized pipelining keeps all processors operating efficiently in a multi-processor system, such that wasteful idle-processing time is minimized.” Pet. 46 (citing Ex. 1003 ¶¶ 212–213). And according to Apple, “Jiang already discusses the importance of time with respect to pruning.” Pet. 46 (citing Ex. 1004, 10:65– 11:25). Apple also argues that a person of ordinary skill in the art would have had a reasonable expectation of success in adding Brown’s pipelining to the Jiang–Baumgartner combination because “[p]ipelining was well-known in the art including in speech recognition systems,” and the three references “teach speech recognition systems using similar hardware, such as various processors to perform similar speech recognition functions,” such that the combination “would have been a trivial modification.” Pet. 46–47 (citing Ex. 1004, 4:60–65, 6:32–36, 6:39–42; Ex. 1007 ¶ 33, Fig. 19; Ex. 1036, 3:11– 15; Ex. 1003 ¶ 214).” slip op. at 21
Patent outcomesUS 7,979,277 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,979,277 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 22, 2024 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–13 and 16 on all petitioned grounds after finding a reasonable likelihood that claim 1 is obvious over Fells.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (vacating a Board decision denying institution where the examiner considered references but never provided any discussion, analysis, or other findings, and the petition provided a sufficient argument on the merits, which the examiner misapprehended or overlooked). Here, in evaluating Becton, Dickinson factor (c), we determine that the Examiner’s reasoning with respect to Fells and Cook is not well developed and neither reference was the basis for a rejection. We also determine, for reasons we discuss more fully below, that InductEV has shown that the Examiner materially erred by overlooking at least the teachings of Fell as applied to claim 1 (Becton, Dickinson factor (e)), and that the Petition presents additional evidence and facts, including testimony by Dr. Allen, that warrant reconsideration of Fells (Becton, Dickinson factor (f)). See infra Section IV.C. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms. Pet. 6 (citing Ex. 1003 ¶¶ 62–63); Prelim. Resp. 5–6. We agree that, for this decision, we do not need to construe any of the terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We discuss the claim terms below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - PTAB · Mar 26, 2024 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claims 1, 3, and 4 are unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’335 patent is unpatentable over the prior art of record, we institute an inter partes review of all challenged claims. And because we find some grounds sufficient for institution, we institute on all grounds in the petition. See SAS, 138 S. Ct. at 1353 (2018); PGS Geophysical, 891 F.3d at 1360. determination with respect to the patentability of any challenged claim or any underlying factual or legal issue, including claim construction. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–7 of the ’335 patent is instituted with respect to all grounds of unpatentability asserted in the Petition, commencing on the entry date of this Decision; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of trial.” slip op. at 54
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field, and at least two years of experience in semiconductor device design and/or 1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, took effect on March 16, 2013. Because the ’335 patent has an effective filing date prior to the effective date of the applicable AIA amendments, the pre-AIA version of § 103 applies. 2 US 2006/0108606 A1, published May 25, 2006 (Ex. 1007). 3 JP H11-261053, published Sept. 24, 1999 (Ex. 1005 (original language); Ex. 1006 (certified English translation)). 4 US 2007/0007547 A1, published Jan. 11, 2007 (Ex. 1008). 5 R.V. Shenoy, et. al, Effect of Mask Wall Angle on Shape Evolution during Through-Mask Electrochemical Micromachining, J. ELECTROCHEM. SOC., Vol. 143, No. 2, 544, Feb. 1996 (Ex. 1013). device operation, or the development of new device topologies.” Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Petitioner also contends that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 18. Patent Owner does not challenge Petitioner’s definition or offer its own. See generally Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’335 patent and the prior art of record, at this stage of the proceeding we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’335 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“type gate material of independent claims 1 and 5 requires that the “bottom of the p-type gate material is more than 10% wider than the top of the material.” Pet. 19. We begin our analysis with the language of the claims themselves. See Phillips, 415 F.3d at 1312. Here, the claims do not recite 7 Patent Owner cites to the Lidow-508 patent itself, instead of the published application included in the record as Ex. 1011, which Petitioner cites to. The parties have not identified any difference between the two references. the bottom of the p-type gate material must be more than 10% wider than the top of the material. Ex. 1001, 5:5–6:30. Thus, the plain language of the claims themselves does not support Petitioner’s proposed construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As discussed above, however, we are persuaded, at this stage, by Petitioner’s argument that that Saxler teaches or suggests an operable enhancement-mode device. See § II.D.1.a.i, supra. Additionally, Patent Owner’s argument regarding modifications that “could be detrimental” to certain devices is not only speculation, but also comprised entirely of attorney argument. Finally, Patent Owner does not directly address Petitioner’s arguments and accompanying evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Saxler and Yoshida to take advantage of simplified manufacturing steps and reduced costs. Based on the present record, Petitioner has sufficiently shown that Saxler and Yoshida disclose or suggest all of the limitations in claims 1, 3, and 4, and that a person of ordinary skill in the art would have had a reason to combine the teachings of Saxler and Yoshida with a reasonable expectation of success. Accordingly, we determine Petitioner has established a reasonable likelihood of prevailing on its challenge that claims 1, 3, and 4 are unpatentable as obvious in view of Saxler and Yoshida. For the same reasons as noted above, we decline to address Petitioner’s challenge of claims 2 and 5–7 based on Saxler and Yoshida alone at this stage. See § II.D.1.c, supra.” slip op. at 44
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,312,335 - PTAB · Mar 20, 2024 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR of claims 1–12 on all petition grounds; the Board found a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’294 patent. Accordingly, we institute an inter partes review as to all of the challenged claims of the ’294 patent on all of the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Patent Owner does not address the knowledge or education of a person of ordinary skill in the art. On this record, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends the terms “compensated GaN layer” and “above” require construction. Pet. 12–17; Prelim. Reply 1–5. Patent Owner contends only the term “compensated GaN layer” requires construction. Prelim. Resp. 5–15; Prelim. Sur-reply 1–3. Upon review of the parties’ arguments and evidence, we determine that only the term “compensated GaN layer” requires construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and 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 POSITATerm construed petitioner constructionDecided for petitioner
“Claims Claim terms are generally given their ordinary and customary meaning, which is the “meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips, 415 F.3d at 1313. Patent Owner does not present evidence that the ordinary meaning in the art of a “GaN layer” is “GaN gate material.” Indeed, the prior art of record discloses multiple GaN layers that do not appear to be “gate material.” Ex. 1006 ¶ 32; Ex. 1005 ¶ 74 (“the channel layer 20 is GaN”); Ex. 1008 ¶¶ 24–25 (noting that the buffer layer and semiconductor layer are GaN). Nor does Patent Owner contend that the term “compensated” requires or implies a particular orientation or location with respect to the gate contact. Thus, by itself, the term “compensated GaN layer” does not require a “compensated GaN gate material.” Rather, Patent Owner contends that given the placement of the “compensated GaN layer” above the barrier layer and below the gate contact, one of ordinary skill in the art would have understood that the claimed “compensated GaN layer” is a “compensated GaN gate material.” Prelim. Resp. 7. We are not persuaded by this argument, at this stage of the proceeding, because the prior art (Uemoto) discloses a compensated GaN layer that is above a barrier layer and below a gate contact, as recited in claim 1, and Patent Owner contends this layer is not a “compensated GaN layer.” Ex. 1006, Fig. 7; Prelim. Resp. 31–32. This tends to suggest that the placement of a “compensated GaN layer” above a barrier layer and below a gate contact, without more, does not necessarily indicate that said layer is part of the gate. In view of the foregoing, on this record, we determine that the language and structure of claim 1 does not support a construction requiring that the “compensated GaN layer” be a “compensated GaN gate material.”” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Mar 4, 2024 · IPR2023-01239 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 11, 12, 14–18, 20–23, and 25–29 on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim, and accordingly, we institute an inter partes review as to all challenged claims of the ’101 patent on the grounds of unpatentability presented. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Other 314aDecided for petitioner
“We are not persuaded it would be appropriate to deny institution merely on the basis of alleged trivial errors such as those identified by Patent Owner. See Prelim Resp. 1. To the extent Petitioner “cit[ed] the wrong Wang reference” (id.), this error was addressed in and corrected pursuant to our November 29, 2023, Order Granting Motion to Correct Clerical or Typographical Mistakes (Paper 13), entered prior to Patent Owner’s filing of the Preliminary Response, with Petitioner subsequently filing a corrected Petition and Declaration of Clifford Reader, Ph.D. Moreover, Patent Owner does not cite to any authority in support of discretionary denial of institution based on findings that a petitioner has not given a petition “due attention.” Cf. USPTO Notice of Proposed Rule Making “Changes Under Consideration to Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings Before the Patent Trial and Appeal Board”, 88 Fed. Reg. 24,503 (April 21, 2023) available at https://www.govinfo.gov/content/pkg/FR-2023-04-21/pdf/2023- 08239.pdf. Accordingly, we decline to deny institution based on these arguments. 2. Identification of Claim Construction, Structure or Acts Corresponding to Means-Plus-Function Limitations Patent Owner asserts that the requested inter partes review should be” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the ’101 patent, the Examiner cited, inter alia, the Hejna prior art reference but did not apply or reject the claims based on that or any other prior art reference. Ex. 1002, 37, 39. There is no disagreement the Chou reference was never cited or considered by the Examiner. Under Becton, Dickinson factor (a), we consider the similarities and material differences between the asserted Chou and Hejna references. Patent Owner contends “[a]lthough Petitioner argues that Chou discloses or renders obvious element [1d], examination of the actual disclosure of Chou reveals that its disclosure is substantially the same as Hejna, prior art of record.” Prelim. Resp. 46. Patent Owner argues that Chou’s disclosures of (1) selecting a target arrival time for each frame sufficiently in advance of its playback time, (2) controlling an upper bound on the time of arrival of bits into the client buffer, and (3) selection of a code rate such that the frame’s arrival time is as close to the target arrival time as possible, relied upon by Petitioner for teaching limitation [1d], are substantially the same as that of Hejna. Id. at 46–47 (citing Pet. 35; Chou, Ex. 1004 ¶¶ 19, 27; Hejna, Ex. 2011, 4:60–63, 8:50–57, 14:3–7). Addressing Becton, Dickinson factors (a) and (b), Patent Owner fails to persuade us that Chou’s disclosure is substantially the same as or cumulative of Hejna’s. Even if, as alleged by Patent Owner, Hejna discloses subject matter corresponding to that disclosed by Chou, which subject matter is asserted by Petitioner as teaching claim 1’s element [1d], it is not clear why the disclosures are otherwise substantially the same. Although recognizing the Examiner’s reasons for allowance are based on the combination of limitations corresponding to claim 1’s elements [1b], [1d], and [1e], Patent Owner’s argument addresses only Petitioner’s reliance on Chou for teaching claim 1’s element [1d]. See Prelim. Resp. 46. Furthermore, evidence extrinsic to the disclosures themselves does not suggest Chou’s disclosure is likely to be the same or substantially the same as Hejna. For example, the two references list no inventor in common, do not relate back to a common priority document, we ascertain no commonly cited prior art references cited during their respective prosecutions, nor do we find any other indicia that the disclosures are the same or substantially the same. Compare Ex. 1004, code (75), with Ex. 2011, codes (56), (75).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstituted
“(ii) Motivations to Combine Second, at this preliminary stage, we are not persuaded by Petitioner’s contentions that a POSITA would have been motivated to combine the teachings of Chou and Wang. Pet. 74. As argued by Patent Owner, “Wang and Chou are directed to different technologies—active encoding applications and transport-layer protocols,” (see Prelim. Resp. 30, 34–35), and Petitioner does not persuasively explain, for example, why the two methods would be combined into a single method rather than implemented independently in their respective transport and application layers. (iii) Scope of Wang’s Teaching vis-à-vis Limitation [1d] Petitioner states “[i]f [Patent Owner] argues Chou doesn’t teach [1d], Wang does” (Pet. 62), concluding “Wang teaches calculating a change in code rate based on both the remaining time before reproduction start time and an available reproduction time, as required by [1d]” (id. at 63). Apart from a bare cross-reference to Ground 1 (see Pet. 62 (“See Ground 1, [1d]”)), Petitioner does not make any reference to Chou for teaching any aspect of limitation [1d] in connection the combination of Ground 2 (see generally id. at 62–65). Furthermore, although contending that “Chou and Wang both disclose controlling code rate to control buffer duration/fullness to prevent buffer underflow” (id. at 72), Petitioner does not clearly indicate that a POSITA would have had reason to combine Wang’s teaching of criteria used to maintain buffer fullness with Chou’s teaching of determining a code rate where the code rate “represents the data amount (the data size, e.g., the number of bytes) of content data for reproducing content at constant speed (reproducing content at 1x speed) for a unit time (e.g., one second)” (Ex. 1001, 7:7–11). Therefore, at this preliminary stage, we treat Petitioner’s Ground 2 as relying on Wang alone for teaching [1d].” slip op. at 54
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,752,101 - Mara Renewables Corporation v. DSM IP Assets, B.V.Institution deniedPTAB · Jan 25, 2024 · IPR2023-01167 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“When asserting unpatentability under obviousness, the patent challenger must show a reasonable expectation of success, that is, “the likelihood of success in combining references to arrive at the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Thus, “[t]he reasonable-expectationof-success analysis must be tied to the scope of the claimed invention.” Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc., 18 F.4th 1377, 1381 (Fed. Cir. 2021); Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 966 (Fed. Cir. 2014) (holding the trial court’s failure to consider the appropriate scope of the claimed invention in evaluating the reasonable expectation of success constitutes a legal error). Relevant to our Decision here, claim 3 requires its microbial lipid to have, among others, at least 60% by weight DHA in the triglyceride fraction and an AV of 0.5 to 26.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the level of ordinary skill at the relevant time. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We emphasize that our finding is not on lack of reasonable expectation of success per se. Instead, we merely find neither the Petition nor the Curtis Declaration persuasively addresses “the expected differences in the oxidizability and oxidation rate—and their expected impact on anisidine values—of an oil containing 42% ARA (for which Schaap discloses limited experimental data) versus one containing 60% DHA in the triglyceride fraction (for which Schaap does not).” See id. at 27. In sum, we find Petitioner has not shown sufficiently that an ordinarily skilled artisan, based on the teachings of the asserted prior art, would have had a reasonable expectation of success for the appropriate scope of the claimed invention (that is, a microbial lipid having at least 60% DHA in the triglyceride fraction and an AV of 0.5 to 26). As a result, on this record, Petitioner has not established a reasonable likelihood that it would prevail in this challenge.” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 10,392,578 - Intel Corporation v. Besang Inc.InstitutedPTAB · Dec 13, 2023 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1 and 13–17 on all petition grounds, finding a reasonable likelihood of success on at least one challenge to claim 13 based on combinations involving Lee or Johnson.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“stackable add-on layer” requires something more than just any type of layer that is directly or indirectly adhered to the substrate or dielectric layer. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer.” Ex. 1001, 12:29–32. Second, the written description of the ’702 patent strongly suggests that a “stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate or a dielectric layer above the that in the invention “a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” Id. at 1:47–50 (emphasis added). Likewise, the specification explains that an SOI layer refers to “a relatively thin, single crystal portion of a semiconductor wafer that can be cleaved and bonded to another previously fabricated wafer, or similar type of substrate.” Id. at 4:47–51. “In this context,” the ’702 patent explains, “the SOI layer may be thought of as an attachment layer, or stackable add-on structure which is suitable for bonding to a semiconductor substrate already containing devices and/or interconnections.” Id. at 4:53– 57. Again, this suggests that a “stackable add-on layer” is separately formed and then bonded to a previously fabricated substrate. Given the structure of the claims and the description of the invention in the written description of the ’702 patent, we preliminarily construe “stackable add-on layer” to be a layer that is formed separately from the substrate and then bonded to the substrate or a dielectric layer above the substrate. We do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate or dielectric layer without being added to a separately formed substrate. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownOther
“Independent claims 1 and 13 do not specify how the stackable add-on layer is bonded to the dielectric layer. Nor does Petitioner assert that the plain and ordinary meaning of “bonding” refers to “wafer bonding.” Thus, to limit the claims to wafer bonding, Petitioner must identify a clear expression of intent in the ’702 patent to define “bonding” as “wafer bonding,” or a clear disavowal of claim scope demonstrating that non-wafer bonding methods are outside the reach of the claims. See Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner does not contend that the patentee acted as its own lexicographer by defining “bonding” as “wafer bonding,” a term that does not even appear in the ’702 patent. Id. at 1365. Nor are we directed to any clear disavowal indicating that methods of bonding other than “wafer bonding” are outside the scope of the claims. Id. at 1366. Thus, we decline to construe “bonded” in claims 1 8 Wafer bonding is a method in which semiconductor layers are formed on separate wafers and then bonded together to create a stacked semiconductor structure. Ex. 1003 ¶ 41. that the standards for lexicography and disavowal are “exacting”). As noted by Petitioner, the ’702 patent describes an SOI layer that is wafer bonded to a previously fabricated substrate. Ex. 1001, 4:47–53. Independent claims 1 and 13, however, do not require an SOI layer, and the disclosure of a single embodiment in which wafer bonding is used is not sufficient to import such a limitation into the claims. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (“Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims.”). In summary, we preliminarily construe “stackable add-on layer . . . the first stackable add-on layer is/being bonded” to require a separate layer that is formed apart from the substrate and then subsequently bonded to the substrate or a dielectric layer above the substrate.9 We do not construe independent claims 1 or 13 to require any particular form or method of bonding.10” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The evidence of record demonstrates that Petitioner and Micron jointly developed the 3D NAND technology that is generally at issue in the district court litigation, and the parties have acknowledged “their long-term joint development partnership” for this technology. Ex. 1013 (district court complaint); Ex. 2010 (“Micron and Intel Extend their Leadership in 3D NAND Flash memory.”); Ex. 2016 (discussing the end of Intel’s and Micron’s NAND partnership). There is no assertion, however, that all 3D NAND technology infringes the challenged claims of the ’702 patent, and Micron and Intel are not accused of infringing the ’702 patent based on the same products and are not co-defendants in any district court litigation. Further, Patent Owner presents no persuasive evidence that the two parties collaborated on the development of either of the accused products, as opposed to general 3D NAND technology, and Petitioner represents that the two parties filed their petitions independently and without coordination or cooperation. Prelim. Reply 1–2; Ex. 2016, 1 (noting that each company sought to independently develop 3D NAND technology in order to “forge” their own path for future NAND development and “better optimize the technology and products for their individual business needs”). relationship between Petitioner and Micron, and Petitioner is not the same petitioner as the petitioner in IPR2023-00900. Thus, General Plastic factor 1 weighs against discretionary denial.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The stipulation filed in the Texas litigation mitigates, to an extent, concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.12 Director’s Memo at 7. Similarly, Petitioner’s stipulation in the Oregon litigation (i.e., that it will not pursue an invalidity defense that the claims challenged in this IPR proceeding are invalid based on grounds that were raised or reasonably could have been raised during the IPR) also mitigates concerns of potentially conflicting decisions and duplicative efforts. Patent Owner contends Petitioner’s stipulation falls short of a Sotera stipulation by carving out any circumstance that “otherwise terminate[s] the instituted IPR.” Prelim. Sur-reply 2–3. Patent Owner interprets this carve- on the patent application publication of the Lee patent. Ex. 1007. Because the disclosures of the Lee patent and patent application publication are substantively identical, we consider the stipulation not to pursue any obviousness ground based on Lee to apply with equal force to Lee’s patent application publication. 12 The stipulation in the Texas litigation bars the defendant from pursuing “any obviousness ground that includes” Lee or Watanabe. IPR2023-00900, Exhibit 1031. Here, Petitioner’s grounds 1A–1F challenge claims 13–17 based in whole or in part on Lee, and grounds 2A–2C and 3 challenge claims 1 and 13 based on combinations of references that do not include Lee or Watanabe. Pet. 3. As such, the grounds to be resolved by the PTAB will differ somewhat from those presented in the Texas litigation. written decision, thereby rendering the stipulation an “empty promise” as the district court in the Texas litigation will undoubtedly resolve validity before a final written decision in this case. Id. at 3. We disagree. We do not understand Petitioner’s stipulation to require that a final written decision be issued before the stipulation takes effect. Rather, so long as an inter partes review is instituted, and until such time as the IPR is terminated or vacated, Petitioner will not pursue any invalidity defense before the district court that is “based on grounds that were raised or could have been raised during the IPR.” Ex. 1034. In summary, given the stipulations filed by the petitioners in the Oregon and Texas litigations, it appears that there will be minimal, if any, overlap between the issues raised in the petitions and in the parallel district court proceedings. Accordingly, Fintiv factor 4 weighs against discretionary denial.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’828 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,741,828 - Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution deniedPTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’494 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction In an inter partes review, we construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2022). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · Graham
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.