- 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 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00122 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable on the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1016, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Id. at 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery, and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5 (citing Ex. 1003 ¶¶ 39–41). Petitioner further 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Petitioner argues, and Patent Owner does not contest, that the pre- AIA statutory provisions apply to this case. See Pet. 5 n.1. Neither party indicates the result would change based on which version of the statute the Board applies for purposes of deciding whether to institute review. 2 Brown, US 3,748,182, issued July 24, 1973 (Ex. 1016). 3 Higuchi, Chinese Patent App. Pub. CN101286572 A, published October 15, 2008 (Exs. 1009 (English translation), 1010 (original Chinese)). 4 Okochi, EP 0829105 B1, published May 21, 2003 (Ex. 1013). 5 Brenner, DE 102005058132 A1, published June 6, 2007 (Ex. 1014, with English translation). 6 Kubota, US 5,654,114, issued August 5, 1997 (Ex. 1015). of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 5
- Expert testimonyPetitioner expert discountedOther
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 18 (citing Ex. 1003 ¶¶ 159–160); see Ex. 1016, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,258,092 - PTAB · May 12, 2023 · IPR2023-00121 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR of claims 1–22 on all asserted grounds, finding a reasonable likelihood that the Higuchi, Kobayashi, and Okochi combination renders at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’092 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–22 of the ’092 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Prelim. Resp. 11–19. Petitioner asserts (Prelim. Reply 1) that it stipulated that “if the IPRs of [the ’092 patent] are instituted, it will not assert invalidity in the parallel district court proceedings based on grounds that were raised or reasonably could have been raised in the instituted IPRs.” Ex. 1018. We are bound by the guidance in the Memorandum, which states that the Board “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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.” Memorandum, 7.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson9 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in engineering (mechanical, electrical or chemical), general science, materials science or the equivalent and 3-4 years of work experience with electrochemical cell packaging systems.” Pet. 5. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and “less education may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). the uncontested assessment offered by Petitioner.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,258,092 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · May 12, 2023 · IPR2023-00161 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded, on this record, that Petitioner adequately establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries:” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 23 (citing Ex. 1003 ¶ 67–68); see Ex. 1010, 1:17–18, 2:38–46, 3:2–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Compare Ex. 1003 ¶¶ 67–68, with Pet. 22–23. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“(‘POSITA’) would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry or a related discipline.” Pet. 19. In addition, Petitioner argues that a person of ordinary skill in the art would have had “at least five years of experience in the design of lithium-ion button cell battery structures.” Id. Petitioner further contends that “[l]ess work experience may be compensated by a higher level of education, such as a master’s or doctorate degree,” and vice-versa. Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 12. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. at 11–12 (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 6
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,869 - PTAB · May 12, 2023 · IPR2023-00160 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, materials or chemical engineering, physics, chemistry, or a related discipline with at least five years of experience in the design of lithium-ion button-cell battery structures.” Pet. 19. Petitioner further contends that “[l]ess work experience may be compensated by more work experience.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 10. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Petitioner argues that “[t]he claims should be accorded their ordinary and customary meaning and do not require further construction by the Board for determination of this Petition.” Pet. 21. Patent Owner agrees that “no claim construction is necessary to deny institution.” Prelim. Resp. 10. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“these drawbacks in a petition directed to a related patent, where Petitioner argued that “a significant portion of the available space within [Kobayashi’s] cell is reduced by the process of crimping the cell closed.” Id. at 46 (quoting Ex. 2008, 2–3). Patent Owner argues that “Petitioner fails to explain why the beaded-over Kobayashi housing Petitioner and its same expert disparaged in another petition would be used in the present combination of references proposed in this Petition.” Id. at 48. Patent Owner’s argument raises an issue about a tradeoff that a person of ordinary skill in the art might or might not have made: under Petitioner’s proposed combination of teachings, it may be that a person of ordinary skill in the art would have had to accept reduced internal volume, and the consequent reduction in energy capacity, as the price of avoiding short circuits. The question of whether this tradeoff existed and, if so, whether a person of ordinary skill in the art would have made the tradeoff is a factual issue best resolved on the full record to be developed at trial. Patent Owner also argues that a person of ordinary skill in the art would not have replaced Higuchi’s housing with Kobayashi’s to reduce the risk of short circuits. Prelim. Resp. 48–49. Patent Owner points to Petitioner’s arguments in a related case regarding claims 27 and 28 of U.S. Patent No. 11,024,905, where Petitioner argues that it would have been obvious to add Kubota’s insulation tape to Higuchi’s leads 11 and 12, and Patent Owner argues that a similar modification here “could reduce such risk Kobayashi’s housing.” Id. at 48–49 (citing Ex. 2042, 2–4). According to Patent Owner, if “Petitioner and its expert are correct that a [POSITA] would have been motivated to adhere an insulation strip to both sides of Higuchi’s lead, it would not be necessary to change Higuchi’s housing for Kobayashi’s beaded-over housing to reduce the risk of short circuits.” Id. at 49. The fact that the prior art may suggest that some combination of techniques is more desirable than, or otherwise preferred over, the combination on which Petitioner relies does not preclude a finding that the challenged claims would have been obvious over Petitioner’s proposed combination. See Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Thus, we have considered Patent Owner’s arguments, and although they cast doubt on Petitioner’s contentions and create a genuine issue of material fact, we are persuaded, on this record, that Petitioner provides sufficient reasoning with rational underpinning to support a motivation to combine the teachings of Higuchi and Kobayashi as proposed. Pet. 21–33. Specifically, Petitioner sufficiently establishes, for purposes of institution, that a POSITA would have had reason to modify Higuchi’s cell to use Kobayashi’s housing in order to reduce the risk that the cell would short circuit. Id. at 23–27. Whether Petitioner sufficiently establishes this issue to prove unpatentability is an issue we need not, and do not, resolve on this preliminary record. We invite the parties to develop these arguments further at trial, to the extent permitted under our rules.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,869 - PTAB · May 11, 2023 · IPR2023-00046 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 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 “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 Petition and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); see also Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 2019) (“TPG”) (“The Board will not institute on fewer than all claims or all challenges in a petition.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ANALYSIS A. Level of Skill In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art at the time of the invention would have had “at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of access control.” Pet. 10 (citing Ex. 1003 ¶¶ 36– 38). At this stage of the proceeding, we adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’830 patent and asserted prior art of record. If the parties disagree with our preliminary finding, they are invited to further brief the issue of level of ordinary skill in the art and, in particular, which disputed issues material to patentability turn on the definition adopted by the Board.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“claims themselves.”). Here, the plain language of claim 1 requires the interfaces and the processor to be coupled via the external communication lines. Petitioner provides no potential reading for this express language, other than to simply say it cannot mean that the external communication lines be between the interfaces and the processor. Though not stated directly, Petitioner appears to interpret “via” as simply meaning “and”: “the unidirectional communication interface and the bidirectional communication interface are coupled to a processor via and the external communication lines.” At this stage, this interpretation appears to conflict with how the ’830 patent uses “via” elsewhere in the claims. For example, claim 1 also recites that the reader “uses the unidirectional communication interface to communicate with the processor via the external communication lines.” If the patent were using “via” to simply mean “and,” this recitation would be nonsensical. Rather, it appears on this record that one of ordinary skill in the art would have understood “via” to have its ordinary meaning of “through.”8” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The appropriate comparison, however, is not between the Figures of the ’830 patent and the prior art, but rather the claims of the patent and the disclosures of the prior art. And, as discussed above, both claims 1 and 3 of the ’830 patent require that the processor be coupled to (or communicate with) the communications interfaces via the external communication lines. The disclosures of Chis that Petitioner cites do not specify such an arrangement; nor does Petitioner even argue that they do. Rather, in Chis, the processor and the external communication lines are coupled via the interfaces, not the other way around.9 Petitioner’s analysis, grounded in a claim construction we do not adopt, is not persuasive as to these claim limitations. As such, Petitioner has not demonstrated a reasonable likelihood of success as to independent claims 1 or 3, or as to dependent claims 2 and 4–10, each of which contains the “via” limitation via dependency.” slip op. at 15
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,467,830 - Florida Food Products, LLC v. Kerry Group Services Int’L Ltd.All claims unpatentablePTAB · Apr 26, 2023 · IPR2022-00006 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Voorde and Hara; the Board did not reach the remaining obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“the invention would have had: a master’s or doctorate degree in food science, biology, chemistry, or a similar field; or a bachelor’s degree in food science, biology, chemistry, or a similar field along with at least 2-3 years of experience in food preservatives generally or more specifically 2-3 years of experience in the chemistry associated with food preservation and nitrates/nitrites [and] would have known that the USDA regulated nitrites for curing meat and would have been able to find these USDA regulations affecting meat products. Pet. 23–34 (citing Ex. 1002 ¶ 48). Kerry’s recitation of the level of ordinary skill in the art is nearly identical. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 43–44). To the extent the parties’ formulations of the level of skill differ, the differences do not appear to be material to any dispute between the parties or any issue of patentability that we must resolve. We determine that the level of ordinary skill the parties propose is consistent with the challenged patent and the asserted art, and adopt that level for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In the Petition, FFP addressed the construction of only one claim phrase, but also submitted that the construction of that phrase does not affect our decision in this case. Pet. 24. Specifically, FFP asked us to adopt a construction that “clarifies that the nitrite results from the added organism reducing the plant nitrate.” Id. at 25. Kerry does not address this construction, and we agree with FFP that construction of that claim phrase has no effect on our decision herein. Thus, we need not adopt it. See Nidec, 868 F.3d at 1017; Vivid Techs., 200 F.3d at 803.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Upon review, we do not believe it is proper to adopt a blanket approach that would assign weight to the entirety of Dr. Baldwin’s 12 In its Sur-Reply, Kerry raises for the first time that, under its definition of the level of skill in the art, Dr. Baldwin is not himself a person of ordinary skill and therefore is not allowed to offer expert testimony from the perspective of a skilled artisan, citing Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1376–78 (Fed. Cir. 2022). See Sur-Reply 15 n.1. To the extent that Kerry is seeking to disqualify Dr. Baldwin’s testimony in its entirety under Kyocera, we consider this to be a new argument that differs from Kerry’s initial argument that Dr. Baldwin’s testimony should be afforded little or no weight due to his lack of familiarity with the field of the ’304 patent. Because new arguments made for the first time in sur-reply are not permitted, we will only focus on Kerry’s initial challenge to the testimony of Dr. Baldwin. testimony, regardless of the subject of his particular opinions. It is clear that Dr. Baldwin has expertise in some areas of chemistry, while Dr. Milkowski’s experience is focused on other areas and emphasizes food chemistry. These differences in expertise may impact how we weigh the testimony of both witnesses, but that determination should be made in the context of a specific subject and based on the applicability of each witness’s background to the opinions. Therefore, we decline to adopt Kerry’s proposed approach of giving Dr. Baldwin’s testimony “little to no weight,” and instead will weigh the expertise of both witnesses in evaluating their testimony on specific areas of dispute, if necessary.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Upon review, we find that a person of ordinary skill in the art would have had reason to modify Voorde in the manner FFP suggests. Voorde explicitly discloses the advantages of heating the medium, and there is no disagreement that heating to 50–52°C would have resulted in at least some reduced microbial load, which is all that the claims require.13 Indeed, Voorde describes that as a result of heating to 50–52°C, its medium is “(partially) sterilized.” Ex. 1003, 7. Kerry’s argument that Voorde does not disclose starting with a “sterile medium” (PO Resp. 25) is unavailing; as discussed above, we do not interpret anything in claim 1 or the ’304 patent 13 At oral argument, Kerry raised for the first time a claim construction argument that “heat treating,” as recited in the claims, requires heating to a level in excess of what is required in Voorde, and a person of ordinary skill would have understood the term to refer to sterilization. Tr. 33:4–34:19, 55:3–9. We decline to address this late-arising argument fully, but note that we find that the ’304 patent does not support such a limited interpretation of the term “heat treating.” to require a sterile medium, and Kerry does not direct us to anything in the record that would persuade us otherwise.” slip op. at 18
Patent outcomesUS 11,071,304 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,071,304 - PTAB · Apr 11, 2023 · IPR2022-01478 · APJ Christopher M Kaiser · IPR · Institution
Instituted review of claims 1–30 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’907 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–30 of the ’907 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson7 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including:” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“(“POSITA”) would have had “a Bachelor’s level college degree in Mechanical, Electrical, Materials or Chemical Engineering, or Science, including Chemistry or Physics or a related field and three to four years of training and experience in the design of electrochemical cells and batteries.” Pet. 5–6. Petitioner further contends that “[a]dditional work or research experience can substitute for a lesser or different education, and vice-versa.” Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail even under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 11. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner requests that all claim terms other than “disposed along” be afforded their plain and ordinary meaning, as understood by a POSITA at the time of the purported invention.” Pet. 9. Patent Owner asserts that its arguments “do not hinge on the outcome of an actual controversy about any claim construction.” Prelim. Resp. 12 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,907 - Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution deniedPTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13
§ 103 obviousnesscites PhillipsPatents in suitUS 11,024,907
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.