• Netflix, Inc. v. Affinity Labs Of Texas, LLCAll claims unpatentable
  PTAB · Feb 28, 2018 · IPR2016-01701 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1, 3–5, 9, 11, 13–18, and 20 are unpatentable as obvious under § 103 over the instituted prior-art combinations.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1), “available media” (claim 9), or “a media” (claim 14). Ex. 1001, 18:31, 19:13, 20:4. In IPR2014-00407, which was directed to related U.S. Patent No. 8,359,007 (“the ’007 patent”), we construed “an available media” to mean “content accessible from a source of audio, video, and/or textual information,” but noted that the term is “not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014-00407, slip. op. at 6 (PTAB July 21, 2014) (Paper 15, 6). This construction was supported by dependent claims 12 and 13 of the ’007 patent, which recite that “the available media” may be a “collection of audio files” (claim 12) or a “collection of video files” (claim 13). Id. Patent Owner did not subsequently contest this construction in IPR2014-00407. See Samsung Electronics Co. v. Affinity Labs of Texas, LLC, Case IPR2014- 00407, slip. op. at 6 (PTAB July 20, 2015) (Paper 48) (Final Written Decision); Affinity Labs of Texas, LLC v. Samsung Electronics Co., 669 F. App’x 576 (Fed. Cir. 2016) (Rule 36 affirmance). Because the ’007 patent and the ’802 patent each claim benefit to the same parent application through a line of continuing applications, we must interpret the same terms within these patents consistently. NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005) (“Because NTP’s patents all derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.”). Moreover, neither party provides citations to intrinsic or extrinsic evidence in this proceeding to suggest a different construction of “an available media” should apply to the ’802 patent. Thus, upon review of the record as a whole, we construe “an available media,” as well as the related terms “available media” and “media,” to include “content accessible from a source of audio, video, and/or textual information,” and note that the terms are not limited to a single file, song, or video, and may encompass, at a minimum, a collection of audio or video files.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The claims of the ’802 patent do not define what a “segment” of an available media is, and the written description of the ’802 patent does not use the terms “segments,” “segment files,” or “independent segment files.” The Specification does note, however, that “an audio file may be formatted, segmented, compressed, modified, etc. for the purpose of providing or communicating the audio invention.” Ex. 1001, 3:26–29. This disclosure supports a construction of “segments,” “segment files,” and “independent segment files” that encompasses portions of an audio file. As noted above, however, the term “an available media” is not limited to an individual song or video file. And, when “an available media” includes a collection of audio or video files, the term segment—which is generally defined as “[e]ach of the parts into which something is or may be divided”—is broad enough to include individual songs, videos, or Internet radio stations within this collection.6 See, e.g., Ex. 3001. Thus, applying the 6 Although Patent Owner indicates that it disagrees with this construction, it does not direct our attention to any portion of the claims, written description, broadest reasonable construction standard, we construe the terms “segments,” “segment files,” and “independent segment files,” when used in conjunction with the terms “available media” or “a media,” to include both individual songs, videos, and/or Internet radio stations in a media collection, as well as individual parts of a single song, video, or Internet broadcast.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “We are not persuaded by these arguments. First, the district court has determined that the claims of the ’802 patent are not in means-plus-function format, and neither party in this proceeding contends that the claims should be interpreted in this manner. Pet. Reply 11. Nor does Patent Owner contend that the prior art asserted in the Petition fails to disclose the claim limitations in question (“collection of instructions” and “delivery resource”). Thus, we do not agree that Petitioner’s failure to identify corresponding structure requires dismissal of the Petition. 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.”)). Second, even if Dr. Mir could not identify the precise contours of several claim limitations before the district court, Petitioner and Dr. Mir correctly concluded that the Board, applying the broadest reasonable construction standard in this proceeding, would adopt constructions of the terms “segment(s)” and “an available media” that would, in combination, encompass parts of an individual song or video, as well as individual songs or videos within a broader media collection. Pet. 21, 41–43, 50. Petitioner and Dr. Mir also provide multiple citations to show where the disputed limitations are taught or suggested in the recited prior art. Patent Owner does not explain why Dr. Mir’s constructions, either express or implied, for the terms in question are incorrect, or why Dr. Mir’s citations to record evidence do not support his conclusions.7 Thus, we do not consider Dr. Mir’s prior testimony to be grounds for denying the Petition or ignoring his uncontested testimony. See Pet. Reply 12 (“Dr. Mir did not ‘guess’ as to the meanings of claim terms. Rather, he was aware of a spectrum of technologies invoked by each ambiguous claim term, and identified elements in the prior art he knew was within the broadest reasonable interpretation of those terms.”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “years of experience in the field of computer networking and/or multimedia networks, particularly as those systems relate to media streaming technology.” Pet. 17 (citing Ex. 1007 ¶ 41). Patent Owner does not address the level of ordinary skill in the art relevant to the ’802 patent. Because Petitioner’s uncontested definition of the level of ordinary skill in the art is reasonable and consistent with the art of record, we adopt it for purposes of this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art of record may reflect the level of ordinary skill in the art).” slip op. at 11

  Patent outcomesUS 9,094,802 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,802
• Emerson Electric Co. v. IP Co., LLCAll claims unpatentable
  PTAB · Jan 9, 2018 · IPR2016-01602 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 4, 5, 10, 11, 13, and 14 are unpatentable under § 103 as obvious over the stated combinations of Burchfiel, Schwartz, and Heart, with Online Encyclopedia for claims 2, 5, and 11.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties differ on the level of ordinary skill applicable to this case. Petitioner contends the person of ordinary skill “would have a minimum of a bachelor’s degree in Electrical Engineering and 2-3 years of experience in the development and design, or technical marketing, of radio communications and computer network systems, or the equivalent.” Pet. 11. Patent Owner’s expert, Dr. Almeroth, responds: “a person of ordinary skill in the art for the patent-in-suit would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent and experience with, or exposure to, computer networks and routing. A person of ordinary skill in the art would also have approximately two years of professional experience with computer networking, routing, and wireless networks.” Almeroth II Decl. ¶ 74. Dr. Almeroth takes issue with Petitioner’s definition “since it does not specifically list Computer Science as a possible degree.” Id. at ¶ 78. We adopt Patent Owner’s slightly more inclusive definition. As the definitions do not differ substantially, however, under either we would reach the same result. C. Claim Construction” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “transmission paths from a particular client to the server. Pet. Reply 5–6. Petitioner responds that Patent Owner’s dictionary definition relates to “a physical map, not a structure for organizing data in mathematics or computer science.” Id. at 6. We agree with Petitioner that this particular definition of “map” is not pertinent to the subject matter of the ’516 patent, and therefore give Patent Owner’s argument based on this definition little weight. See id. If anything, the dictionary entry cited by Patent Owner supports Petitioner’s view that the construction of “map” should not be limited to multiple paths from one client. Thus, the second definition of “map” in the dictionary entry is not limited to multiple elements: “The correspondence of one or more elements in one set to one or more elements in the same set or another set.” Ex. 2001, 827 (“map,” definition 2; emphasis added). We deem this second definition, identified as pertaining to mathematics (“Math.”), to be more pertinent to the technology of the ’516 patent than that chosen by Petitioner. Nor are we persuaded by Patent Owner’s other argument, based on the reference in the ’516 patent claims to plural “paths.” PO Resp. 11–12. As Petitioner points out, claims 1 and 13 recite “changing the transmission path [singular] from the client to the gateway so that the path to the gateway is chosen.” Pet. Reply 6. We are, therefore, not persuaded by the arguments presented that the construction of this term in our Institution Decision requires modification. We therefore construe the term “map” as containing the paths or links to a node in the network, including a single path.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededOther

    “We agree with Petitioner that this term needs no express construction. However, we determine that it is necessary to address Patent Owner’s proposed construction, as it is central to its defense to Petitioner’s challenge. Patent Owner’s construction of this term is related to its proffered construction of “map of data packet transmission paths,” discussed supra. According to Patent Owner, “[t]he claim language itself . . . requires the server to change the selection of a transmission path including an identification of an entire path from the client to the server.” PO Resp. 13 (emphasis added). We disagree with this interpretation. The claim uses the word “chosen,” not “select.” We agree with Petitioner that this is a significant difference, in that “chosen” does not necessarily imply a selection among alternative paths. Pet. Reply 7. Further support for this conclusion is found in our discussion of “map of data packet transmission paths,” supra. There, we conclude that “map” should not be limited to multiple paths from a client. See supra. In the same way, the claim language should not be construed as requiring choosing from a selection of alternative paths. Patent Owner points to a decision in which another panel of the Board, in IPR2015-01901, construed the word “select” in a “related patent.” PO Resp. 13–14. We are not persuaded by that decision that we are misconstruing the claims at issue here, which do not use the word “select.” In the context of the ’516 patent claims, we do not regard “chosen” as having the same meaning as “select.”” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We find that Petitioner has demonstrated that Burchfiel’s connectivity matrix meets this claim limitation. Pet. 35–35; 54. We are not persuaded by Patent Owner’s arguments in rebuttal. First, addressing the “plurality of descriptions” argument, we have construed the term “map” as not limited to storing multiple paths from one client to the server. Thus, Patent Owner’s argument calling for a “plurality of descriptions” of a path from a client to the server is contrary to our construction. Moreover, we are not persuaded that a map must contain the “entire path.” We have construed “map” as containing the paths or links to a node in the network, including a single path. See infra. Thus, the “entire path” argument fails for this reason alone. We find, however, that even under Patent Owner’s construction of map as requiring a “description of the entire path,” Burchfiel would meet this limitation. Ex. 1005, 246. Burchfiel teaches a map containing both the path from the station to the server and from the server to the station. According to Burchfiel, a connection table provides a map of path information: Once a station has labelled all PRU’s and established connections to them, the information for maintaining these connections is entered into the station’s connection table. This contains the status information described above for handling the connection protocol. Ex. 1005, 247 (emphasis added). As Petitioner points out, Burchfiel specifically describes these connections as “bidirectional.” Pet. Reply 9 (citing Ex. 1005, 246 (“Since most expected uses of the PRN will require bidirectional communication, the PRN connection is bi-directional.”)). Petitioner provides persuasive expert testimony to the effect that “it would have been obvious to recompute the route in both directions, to the extent not disclosed by Burchfiel, based on Burchfiel’s disclosure that, e.g., the ‘PRN connection is [a] bidirectional’ ‘data transmission path.” Geier II Decl. ¶ 69. We find that at the very least, therefore, Burchfiel’s reference to “bi-directional” connections suggests such a computation. “Even if a reference’s teachings are insufficient to find anticipation, that same reference’s teachings may be used to find obviousness.” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1345 (Fed. Cir. 2017). We find based on the foregoing that Burchfiel’s disclosure would teach or suggest to a person of ordinary skill that the connection table stores bidirectional path information.” slip op. at 18

  Patent outcomesUS 6,249,516 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,249,516
• Fitbit, Inc. v. Aliphcom, Inc. D/B/A JawboneAll claims unpatentable
  PTAB · Aug 15, 2017 · IPR2016-00607 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 16–19, 23, and 26 are unpatentable as anticipated by Lo; claims 20–22, 24, and 25 are unpatentable as obvious over the specified combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The broadest reasonable interpretation standard is intended to address just such situations, to encourage patentees to resolve ambiguities in claim language and encourage precision in claim drafting. See Cuozzo, 136 S. Ct. at 2145 (“use of the broadest reasonable construction standard . . . encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims.”). Therefore, when faced with a claim term which has multiple reasonable interpretations in light of the specification, we must choose the broadest that is still reasonable. Here, that is the interpretation that encompasses a molding formed substantially across a side of the inner molding. We note, however, that we do not read the term as broadly as Fitbit implies, such that “substantially” would permit a small amount of coverage of that single side. We agree with Jawbone that this term of degree was intended to capture insubstantial differences in coverage, such as that depicted in Figure 9 (wherein the outer molding does not cover plug 904 and button 906). Accordingly, an outer molding that is formed substantially across a single side of an inner molding, would “cover all or 7 In our Decision on Institution, we phrased this interpretation as “on top of,” but did not intend to introduce a directional component (such as “above”) to the claim term that is unsupported by the ’811 patent. As Dr. Young understood, “the ‘top’ of the inner molding is the surface of the inner molding, not just the side that happens to point up as the ‘top’ when viewed in a cross-sectional image.” Ex. 2001 ¶ 47. To remove any potential confusion, we have rephrased the interpretation as “across a side of.” substantially all” of that inner molding within the broadest reasonable interpretation in light of the ’811 patent specification.” slip op. at 22

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “The problem with Dr. Young’s testimony—and, in turn, Jawbone’s position—is that it rests on a flawed premise. Contrary to Dr. Young’s statements, the ’811 patent does not state conclusively that the purpose of the outer molding recited in claim 16 is protection of the inner molding. The specification states that the outer molding “may also be configured to completely enclose or encase an underlying item in order to protect the inner molding, the protective layer, and any elements from damage.” Ex. 1001, 7:29–32 (emphasis added). But the specification also states that the outer molding may be used to provide “surface ornamentation” to an object. Id. at 6:6–8. Furthermore, the specification acknowledges that “protective” is used in two contexts in the patent: providing protection to the structure to which it is applied, but also “a protective property may be a characteristic of a coating that, when applied, protects a wearer or users” (for example, an anti-bacterial property). Id. at 12:36–51 (emphasis added). Neither Jawbone nor Dr. Young address why, if the purpose of the outer molding is to protect a user, it would be necessary to fully enclose the inner moldings instead of merely covering the surface that is to be in contact with a user. Dr. Young also cites, as evidence of the protective nature of the outer molding, several dependent claims which recite that the outer molding has protective features such as “protect[ing] against ultraviolet radiation” (claim 4) or a “waterproof seal” (claim 6). Ex. 2001 ¶ 51. The flaw in this argument is that these dependent claims depend from claim 1, not claim 16. While they may signal that the outer molding of claim 1 has a protective purpose, they are not relevant to claim 16. By contrast, claim 16 recites that at least one of the inner moldings has a protective property, and the dependent claims further specify protective properties for that inner molding, such as waterproofing, oleophobicity (fingerprint resistance), or antibacterial. Dr. Young hypothesized that there might be a reason to make an inner molding antibacterial, even if it is completely enclosed (Ex. 1029 61:4–13), but was unable to provide a single example of a product with a fully encased, antibacterial inner molding (id. at 62:24–63:7). The fact that claim 16’s inner molding has a protective property, therefore, diminishes the credibility of Dr. Young’s testimony that the outer molding must fully encase and protect the inner molding. In sum, we disagree with Dr. Young’s conclusion that the outer molding of claim 16 must have a protective property, and that in that context the only reasonable construction of “covers all or substantially all” is a molding that encases or encloses the inner molding.5 Jawbone’s remaining” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Reviewing Fitbit’s assertions regarding the written description and figures of Lo, we find that the reference discloses in a single embodiment all limitations of claim 16. Jawbone does not challenge the Petition as to the first two steps of claim 16, and we find that Lo discloses both applying a protective material substantially over one or more of a plurality of elements, and forming a protective inner molding substantially over that protective material. Furthermore, for the reasons discussed above, we find that Lo’s transmission medium is an outer molding that covers all or substantially all of the inner molding. With respect to dependent claims 17–19, 23, and 26, we find that Lo discloses the additional elements of these claims as set forth by Fitbit in its Petition. Pet. 24–28. For example, claim 18 requires that the protective property of the inner molding is waterproofing, and claim 19 recites water-resistance. We find that Lo discloses that its plastic housing provides water resistant properties. Ex. 1003, Abstract, ¶ 121. Jawbone does not contest any of these additional claim limitations or argue separately the patentability of the dependent claims apart from independent claim 16. Instead, Jawbone relies on its argument that there is no outer molding as recited in claim 16 (PO Resp. 23), and that Fitbit improperly combined embodiments (id. at 26), arguments we discussed and rejected above. For these reasons, and based on a review of the complete record, we find claims 16–19, 23, and 26 are anticipated by Lo.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Fitbit responds by arguing that, even if Lo requires ultrasonic transmission, a person of skill in the art “would have naturally selected a coating that does not render the Lo heart monitor useless.” Pet. Reply 23. While this is true, it also admits the premise of Jawbone’s argument. In other words, if the coatings of Huang render Lo’s monitor useless, a person of ordinary skill would not have combined Huang with Lo. Nevertheless, we do not agree with Jawbone’s characterization of Lo as describing ultrasonic transmission of the monitor as “critical.” The portion of Lo cited by Jawbone describes prior art devices, and states that “[p]rior ultrasonic monitors require applying water or an aqueous gel between the transducer module and the living subject to eliminate any air gap.” Ex. 1003 ¶ 17 (emphasis added). There is no statement that the plastic housing of the module—the “inner molding” of claim 16 that must have the protective properties supplied by Huang—must be ultrasonically transmissive. Indeed, it is the transmission medium of Lo that is explicitly described as having ultrasonic transmission properties, and Lo’s transmission medium addresses this deficiency in prior art devices. Id. at 58–59. Lo does not state whether its plastic housing is suitable for ultrasonic transmission, and there is no basis for concluding that the addition of Huang’s coatings—whether or not they disrupt ultrasonic transmission— would result in a non-functional device. We find that Fitbit, relying on the testimony of Dr. Cairns, has articulated a reason with rational underpinning for combining the coatings of Huang with the device of Lo. Pet. 29–30 (stating that it would have been obvious to “utilize the well understood application of hydrophobic materials, such as in Huang, to have imparted protective properties to the plastic housing in Lo”); Ex. 1002 ¶¶ 64–66. This combination would have been within the level of ordinary skill in the art, on which the experts largely agree.9 Jawbone’s arguments do not convince us otherwise. Furthermore, we find that the combination of Lo and Huang in this manner teaches all limitations of claims 20–22 for the reasons given by Fitbit, assertions that” slip op. at 30

  Patent outcomesUS 8,529,811 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,529,811
• Microsoft Corporation v. Bradium Technologies LLCAll claims unpatentable
  PTAB · Jul 26, 2017 · IPR2016-00449 · APJ Minn Chung · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious under § 103(a) over Reddy and Hornbacker.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Patent Owner’s argument against a master’s degree is unpersuasive because “[t]he actual inventor’s skill is irrelevant” to the level of skill of a hypothetical person of ordinary skill in the art. Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Nonetheless, the parties’ definitions are not necessarily inconsistent because Dr. Agouris opines that a person of ordinary skill in the art at the time of the invention would have had at least two years of experience in image and graphics processing including developing, designing, or programming client-server software for computer networked environments beyond a bachelor’s degree. Ex. 2003 ¶ 17. First, we do not perceive any meaningful difference between the parties’ definitions of the technical field of the required experience. Second, the parties do not argue, nor do we find, that the difference between two and five years of experience by a person of ordinary skill in the art would impact the obviousness inquiry in any way in this proceeding. Based on the foregoing, we determine that a person of ordinary skill in the art at the time of the invention of the ’506 patent would have had a Bachelor of Science or equivalent degree in electrical engineering or computer science as well as two to five years of experience in a technical field related to geographic information system or the transmission of digital image data over a computer network.” slip op. at 14

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “4. Reasons for Combining Reddy and Hornbacker Having determined that the combination of Reddy and Hornbacker discloses the elements recited in claims 1–21, we address the question of whether a person of ordinary skill would have been motivated to combine the teachings of these references. The motivation to combine need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F. 3d 1356, 1361 (Fed. Cir. 2006). There is no requirement that the prior art contain an express suggestion to combine known elements to achieve the claimed invention; the suggestion to combine may come from the prior art, as filtered through the knowledge of one skilled in the art. Id. (citing Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997)). Petitioner states that Reddy and Hornbacker seek to achieve similar objectives, i.e., transmission of large images (Pet. 23), and take a similar approach, i.e., using tiled images and accessing the database through the world wide web (id. at 22–23). Petitioner contends Reddy teaches an overall system that enables a standard computer, such a PC or laptop, to access large scale geographic information, but does not disclose the use of compression. Id. at 22–23. Petitioner cites Hornbacker as analogous art for its disclosure of GIF compression of image data for efficient transmission on the Web. Id. at 23. Petitioner argues that a person of ordinary skill would have been motivated to combine the teachings of Reddy and Hornbacker because Reddy teaches the need for a system that can operate on a conventional computing device to access large amounts of geographic information, and Hornbacker, relying on similar network and Internet technologies, teaches operating on limited bandwidth connections (e.g., 28.8 Kbytes/sec) to allow a client to request specific image view data, e.g., in a manner closely related to Reddy’s flyover capability. Id. at 24–25.” slip op. at 58

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Perhaps most persuasive, however, are statements in Reddy that using VRML offers cartographers and geographers the potential to disseminate 3- D maps and spatial data over the World Wide Web, that as one zooms into a region, higher resolution data such as elevation and imagery are progressively downloaded and displayed, that the functionality is implemented in a standard VRML browser for downloading data over the World Wide Web and that, but for its essential management of a level of detail using the view dependent techniques disclosed (including projected screen size to decide when to reduce terrain detail), the time required to download and render such a model would prohibit real-time interaction using the current generation of VRML browsers. Ex. 1004 ¶¶ 1, 3, 9, 12, 42, We note, in particular, Reddy’s disclosure of view dependent level of detail techniques and are not persuaded that Reddy teaches away from operation on a limited bandwidth communications device. In other words, the key feature disclosed in Reddy that enables real- time interactions (even over the World Wide Web link) is the view dependent level of detail techniques, not any technique that would operate only on high speed network connections. We do not perceive, nor does Patent Owner identify, anything in Reddy’s view dependent level of detail techniques that implicates or specifies the speed or bandwidth of the communication connection over which the techniques are designed to operate. Therefore, we are not persuaded that Reddy teaches away from operation on a limited bandwidth communications device.” slip op. at 62

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “presumption of nexus because its evidence is tied to specific products that embody the claims of the ’506 patent. PO Resp. 53 (citing Declaration of Mr. Isaac Levanon (“Levanon Decl.”)7 ¶¶ 1–94; Exs. 2013, 2021, 2044, 2055). In support of its contention, Patent Owner cites to the entirety of the Declaration of Mr. Isaac Levanon, all 94 paragraphs of it, as well as four exhibits, without explaining what is discussed in the Levanon Declaration, what the cited exhibits are, what the significance of the exhibits is, and how the cited evidence show the claimed invention is embodied in which specific Patent Owner product. Without Patent Owner’s explanation to guide us through the evidence, we are unable to determine whether Patent Owner’s evidence is tied to specific products that embody the claimed invention. Therefore, Patent Owner does not demonstrate that it is entitled to a presumption of nexus. Accordingly, we consider the issue of nexus in the context of the specific objective considerations presented by Patent Owner in what follows.” slip op. at 65

  Patent outcomesUS 8,924,506 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,924,506
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastic Engineering & Technical Systems, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00433 · APJ Jennifer Meyer Chagnon · IPR · Final written decision

  Claims 1–32 are unpatentable as obvious over Moss and Erhart; Patent Owner’s motion to exclude Dr. Slocum’s declarations is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention. This conclusion is further supported by the specification of the ’925 patent. The benefits described in the ’925 patent stem from the claimed actuator assembly, rather than from any distinctions in the design of the injection molding machine. For example, the ’925 patent describes the following advantages: “regulating a flow of molten material into a mold with more control over the molding process,” “the valve gate assembly can infinitely adjust the position of the valve . . . , thereby adjusting the flow rate,” “fast adjustment of the valve and accurate adjustment of the valve to 0.001 inches,” “eliminat[ing] the use of hydraulics,” and “eliminat[ing] the use of pneumatics.” Ex. 1001, 2:26–42 (emphases added). As described in the ’925 patent, these benefits are due to actuating system 36. See, e.g., id. at 4:45–5:9. Manifold assembly 12 and valve pin 32 of the ’925 patent, on the other hand, are described as “conventional and known in the art.” Id. at 4:8–10, 4:23–24. For these reasons, we are persuaded that Petitioner’s definition more accurately reflects the level of ordinary skill, and adopt Petitioner’s definition for purposes of this Decision.5” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find, based on the complete record now before us, that Dr. Slocum’s qualifications align sufficiently with the challenged subject matter and that he has sufficient expertise to be of assistance, particularly on issues related to the claimed actuating system. During the oral hearing, Patent Owner’s counsel admitted that Dr. Slocum has “a lot of expertise in actuators.” Tr. 44:9–12; see also id. at 45:17–22 (“JUDGE TORNQUIST: So in your opinion is Dr. Slocum qualified to testify about force-absorbing mechanisms in actuators? MR. WARN: I think there is no question that Dr. Slocum is very skilled in that art. He knows a lot about that subject.”). We, thus, are persuaded that Dr. Slocum is qualified to testify as to the knowledge of a person of ordinary skill in the art of the ’925 patent.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). We generally give claim terms their ordinary and customary meaning. See Translogic Tech., 504 F.3d at 1257 (“The ordinary and customary meaning ‘is the meaning that the term would have to a person of ordinary skill in the art in question.’” (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc))). The parties’ dispute, however, does not require express construction of any claim term. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)); see also Tr. 13:1–5 (Petitioner noting that no claim construction issues remain in this case).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Erhart expressly teaches that its actuator improves upon the hydraulic- and pneumatic-type actuators discussed in Moss, as well as the electric motor/lead screw type actuators selected to replace hydraulic and pneumatic actuators in Moss’s injection molding machines. Ex. 1002, 1:11–32 (Moss explaining that traditional hydraulic and pneumatic actuators are “complex in design, maintenance intensive, bulky in size and relatively undesirable in environments of higher cleanliness”); Ex. 1003, 1:20–53, 2:10–13 (Erhart explaining that the disclosed actuators improve upon hydraulic and pneumatic actuators, as well as the motor/lead screw type actuators utilized in Moss). In particular, Erhart discloses that its planetary roller screw drive system provides better control than pneumatic and hydraulic actuators and is smaller than the motor/lead screw type actuators utilized in Moss. Ex. 1003, 1:20–32, 1:47–52, 2:9–14. Dr. Slocum provides persuasive testimony that smaller motors and actuators were known to be desirable in injection molding machines. Ex. 1004 ¶¶ 35, 61 (asserting that large actuators/electric motors “can limit how closely gates can be positioned adjacent each other”); see Ex. 1002, 4:44, 4:62 (indicating that the disclosed injection molding system utilizes multiple gates); Ex. 1003, 1:43–53, 2:10–14; Pet. 23–25. Dr. Slocum also provides persuasive testimony that it was known in the art that the planetary roller screw drive system of Erhart is more efficient than the motor/lead screw system of Moss. Ex. 1004 ¶¶ 61–62 (Dr. Slocum testifying that the rolling contact roller screw of Erhart has an efficiency of about 95%, whereas the “sliding contact thread leadscrew actuator” of Moss has an efficiency of about 30%); see Pet. 25. Patent Owner does not provide any testimony or persuasive evidence to rebut the testimony of Dr. Slocum on these points.” slip op. at 25

  Patent outcomesUS 7,845,925 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,845,925
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastic Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00432 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Moss and Erhart because the combination teaches every limitation and offers a reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot 3 Patent Owner also has filed a Motion to Exclude Dr. Slocum’s Testimony (Ex. 1004; Ex. 1009). See Paper 23. We address Patent Owner’s Motion to Exclude separately, below. runners.” See id. at 25. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention. This conclusion is further supported by the specification of the ’191 patent. The benefits described in the ’191 patent stem from the claimed actuator assembly, rather than from any distinctions in the design of the injection molding machine. For example, the ’191 patent describes the following advantages: “regulating a flow of molten material into a mold with more control over the molding process,” “the valve gate assembly can infinitely adjust the position of the valve . . . , thereby adjusting the flow rate,” “fast adjustment of the valve and accurate adjustment of the valve to 0.001 inches,” “eliminat[ing] the use of hydraulics,” and “eliminat[ing] the use of pneumatics.” Ex. 1001, 2:27–42 (emphases added). As described in the ’191 patent, these benefits are due to actuating system 36. See, e.g., id. at 4:45–5:9. Manifold assembly 12 and valve pin 32 of the ’191 patent, on the other hand, are described as “conventional and known in the art.” Id. at 4:8–10, 4:23–24. For these reasons, we are persuaded that Petitioner’s definition more accurately reflects the level of ordinary skill, and adopt Petitioner’s definition for purposes of this Decision.4” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “injection molding machines that include an actuator that moves the valve or pin of the valve gate assembly to open and close the valve gate. See Ex. 1001, 13:36–46; PO Resp. 23–25; Pet. 4. Dr. Slocum has an undergraduate degree, master’s degree, and a Ph.D. in Mechanical Engineering, all from MIT, has been a professor of engineering at MIT since 1985, and previously worked as a mechanical engineer for the National Institute for Standards and Technology. Ex. 1004 ¶¶ 2–3. Dr. Slocum states that he has experience with “molding technology, including the design of mold opening and closing systems, as well as precision machine elements and systems which would be used in computer controlled injection molding machines.” Id. ¶ 5. Dr. Slocum also has authored books on machine design (id. ¶ 4), and purports to have experience “in the field of precision machine components, including actuators employing transmission components to convert rotary motion into linear motion of an output shaft” (id. ¶ 7). We note also there is no requirement of a perfect match between a declarant’s experience and the field of the art in question. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010); see also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding district court’s admission of testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). A person need not be a person of ordinary skill in the art in order to testify as an expert under Fed. R. Evid. 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (noting that under Fed. R. Evid. 702, the expert must possess sufficient “expertise to be of assistance” to the trier of fact). We find, based on the complete record now before us, that Dr. Slocum’s qualifications align sufficiently with the challenged subject matter and that he has sufficient expertise to be of assistance, particularly on issues related to the claimed actuating system. During the oral hearing, Patent Owner’s counsel admitted that Dr. Slocum has “a lot of expertise in actuators.” Tr. 44:9–12; see also id. at 45:17–22 (JUDGE TORNQUIST: So in your opinion is Dr. Slocum qualified to testify about force-absorbing mechanisms in actuators? MR. WARN: I think there is no question that Dr. Slocum is very skilled in that art. He knows a lot about that subject.). We, thus, are persuaded that Dr. Slocum is qualified to testify as to the knowledge of a person of ordinary skill in the art of the ’191 patent.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for the terms “axially moveable,” “circumscribing,” and “a closed-loop feedback control system.” Pet. 11–13. At oral argument, however, Petitioner noted that no claim construction issues remain in this case. Tr. 13:1–5. Patent Owner does not address Petitioner’s proposed constructions or assert that any other claim terms 1 U.S. Patent No. 6,294,122 B1, iss. Sept. 25, 2001 (Ex. 1002, “Moss”). 2 U.S. Patent No. 5,557,154, iss. Sept. 17, 1996 (Ex. 1003, “Erhart”). require construction for purposes of this Final Written Decision. Accordingly, we determine that no claim terms require construction for purposes of this Final Written Decision. See 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 6

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’191 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” 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.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the argument, however, we would not exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss—as formulated by Petitioner—was ever considered by the Examiner or applied in any rejection of the claims. See Dec. on Inst. 6–7.” slip op. at 7

  Patent outcomesUS 8,192,191 unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,192,191
• Husky Injection Molding Systems Ltd. / Husky Injection Molding Systems, Inc. v. Plastics Engineering & Technical Services, Inc.All claims unpatentable
  PTAB · Jun 15, 2017 · IPR2016-00431 · APJ Jeffrey W Abraham · IPR · Final written decision

  Claims 1–22 are unpatentable as obvious over Moss and Erhart because the combination teaches their limitations and a skilled artisan would have had reason to combine the references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ dispute regarding the level of ordinary skill comes down to whether the hypothetical person of ordinary skill must have specific “experience designing and operating injection molding equipment using hot runners.” See id. at 25–26. While we agree with Patent Owner that one of skill in the art will have some familiarity or experience in valve gate assemblies for injection molding machines, we are not persuaded by Patent Owner’s assertion that the relevant art should be defined so narrowly as to specifically require significant experience designing and operating injection molding machines. Patent Owner presents no evidence that the design of injection molding machines is particularly specialized and beyond the skill of a mechanical engineer. Thus, we disagree with Patent Owner and decline to insert any specific amount of experience with, or specialized knowledge of, injection molding machines into the definition of one of ordinary skill in the art at the time of the invention.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner argues that Dr. Slocum fails to adequately establish his familiarity with injection molding machines, molding processes, or computer controlled motion of injection molding equipment, and “tries to draw the Board’s focus away from injection molding machines to a more generic or academic subject matter that he deems himself qualified to give an opinion.” PO Resp. 20–21, 25–26. During the oral hearing, Patent Owner, referring to Dr. Slocum’s cross-examination testimony, argued that Dr. Slocum does not, in fact, have injection molding experience. Tr. 43:17– 44:1; see Mot. for Obs. 10–11 (citing Ex. 2006, 35:15–36:15, 121:10– 122:24). Dr. Slocum, however, expressly testified that he had designed injection molding devices, made molds used for injection molding, and run injection molding machines in the lab at the Massachusetts Institute of Technology (“MIT”). Ex. 1004 ¶ 5; Ex. 2006, 31:1–4, 36:1–5; see Pet. Resp. 14–15. Based on the evidence before us, we find that Dr. Slocum has sufficient familiarity with injection molding machines. Further, as discussed above, we are not persuaded that the level of ordinary skill requires any specific amount of experience with, or specialized knowledge of, injection molding machines.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “B. 35 U.S.C. § 325(d) Patent Owner argues that, because Moss and Erhart were considered during prosecution of the application leading to the ’436 patent, we should exercise our discretion under 35 U.S.C. § 325(d) to deny institution of inter partes review. PO Resp. 9–12. “In determining whether to institute or order a proceeding,” 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.” 35 U.S.C. § 325(d). As we have already decided to institute a proceeding, Patent Owner’s § 325(d) argument is moot. See id. Even if we were to review the substance of the § 325(d) argument, however, for the reasons set forth in the Institution Decision we would not be persuaded to exercise our discretion in this case as there is insufficient evidence that the combination of Erhart and Moss was ever considered by the Examiner or applied in any rejection of the claims. Dec. on Inst. 8–9.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “D. The Instituted Ground of Unpatentability We instituted trial based on the ground that claims 1–22 are unpatentable under 35 U.S.C. § 103(a) over Moss1 and Erhart.2 Dec. on Inst. 25.” slip op. at 8

  Patent outcomesUS 7,588,436 unpatentable
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,588,436
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-01312 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.

  RulingsFinal written decision

  • BurdenOther

    “Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14

  Patent outcomesUS 5,965,924 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,965,924
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-00290 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 7–9, 15, and 17 are unpatentable as anticipated by Sakamoto; claims 10–12 are unpatentable as obvious over Sakamoto and Cederbaum.

  RulingsFinal written decision

  • BurdenOther

    “Owner’s election not to file a Patent Owner Preliminary Response does not implicate any adverse inference. 37 C.F.R.§ 42.107(a); Office Patent Trial Practice Guide. 77 Fed Reg. 48756, 48,764 (Aug. 14, 2012). However, as to the Patent Owner Response after institution of trial, under our Scheduling Order “Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.” Paper 11, 3; see In re Nuvasive, 842 F. 3d 1376, 1381 (Fed. Cir. 2016)(finding that NuVasive waived public accessibility arguments in its Preliminary Response by failing to challenge public accessibility during the trial phase, i.e. by not addressing public accessibility in its Trial Response and explicitly declining to make further arguments at oral hearing). In this case, Patent Owner “defers to the Board” to determine whether Petitioner has demonstrated the challenged claims are unpatentable by a preponderance of the evidence. PO Resp. 2. There is no argument or evidence, other than that presented in the Petition and the accompanying Exhibits, for us to consider. Nevertheless, “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “meaning to the terms not construed. We applied the broadest reasonable interpretation to the following term that required construction. Noting a claim construction dispute in co-pending district court litigation, Petitioner proposed that we construe the “diffusion region formed in said substrate” to mean “conductive terminal region, such as a source or drain, that contains dopants implanted in the silicon substrate.” Pet. 24. As discussed in the Decision to Institute, we determined that the subject matter of the claims concerns a local interconnect between a gate and a diffusion region and that there was no need to further construe “the diffusion region formed in said substrate” for purposes of this decision. Dec. to Inst. 5–6. Based on the complete record now before us, we discern no reason to change the constructions.” slip op. at 5

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner cites Sakamoto’s disclosure of softening and reflowing BoroPhosphoSilicate Glass (BPSG) film to form insulating layer 9, stating that BPSG is a type of silicon oxide. Id. at 44–45 (citing Bravman Decl. ¶ 91; Ex. 1115, at 185).5 We credit Dr. Bravman’s testimony and are persuaded that insulating layer 9 is formed of silicon oxide.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “embodiments, which all delineate p-well region 2 and Sakamoto’s fifth embodiment in which p-well region 2 is not shown, based on the record in this proceeding, we are persuaded that the evidence supports Petitioner’s contention that the implanted p-well region is part of the silicon substrate.” slip op. at 11

  Patent outcomesUS 5,965,924 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,965,924
• Intel Corporation / Qualcomm Incorporated et al. v. DSS Technology Management, Inc.All claims unpatentable
  PTAB · Jun 1, 2017 · IPR2016-01314 · APJ Minn Chung · IPR · Final written decision

  Claims 8–12 are unpatentable as anticipated by Heath under § 102(b), because Heath discloses every limitation of the challenged claims.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “preliminarily interpreted the “angle limitation” set forth above—i.e., the limitation reciting “a side of the electrically insulative spacer has an angle relative to the substrate surface that is either a right angle or an acute angle of more than 85°”8—to mean “a side of the electrically insulative spacer has an angle relative to the substrate surface that is greater than 85° and less than or equal to 90°.” Dec. on Inst. 8–14. Importantly, we were unpersuaded by Patent Owner’s argument that the angle of a side of the insulating spacer must be obtained “through the use of a low selectivity etch” (Prelim. Resp. 15–19) and determined that the challenged claims do not require the use of a low selectivity etch. Dec. on Inst. 8–12. 8 Claim 1 includes essentially the same limitation, the only difference being that claim 1 recites “insulating spacer” instead of “electrically insulative spacer” recited in claim 8. Tracking the language of the claims, the ’552 patent uses the terms “insulating spacer” and “insulative spacer” interchangeably throughout the written description. See, e.g., Ex. 1101, col. 6, ll. 13–65; see also id. at col. 13, ll. 55–62 (using “the spacer portions of the insulating material” and “the spacer portions [of] insulative material” interchangeably). The parties also appear to use the terms “insulating spacer” and “insulative spacer” interchangeably in the Petition and the Preliminary Response. See, e.g., Pet. 28–29; Prelim. Resp. 15–16, 19. Upon considering the complete record, we deem the terms “insulating spacer” and “insulative spacer” to be interchangeable and to have no meaningful difference in their meaning in the context of the ’552 patent. The parties do not present additional claim construction arguments in their Patent Owner Response and Petitioner Reply. Upon considering the complete record, we discern no reason to deviate from our construction, which was adopted from the parties’ agreed construction at the district court (Dec. on Inst. 14 (citing Ex. 1124 (Dist. Ct. Claim Construction Order), 7– 8)), and maintain our construction of the “angle limitation” to mean “a side of the electrically insulative spacer has an angle relative to the substrate surface that is greater than 85° and less than or equal to 90°.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “1. Principles of Law A claim is unpatentable under 35 U.S.C. § 102 only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit Dr. Bravman’s testimony and are persuaded that sources and/or drains are known in the art to be electrically conductive diffusion regions of a transistor structure, and that polysilicon used to form gate electrode 16 of Heath is an electrically conductive material. See Ex. 1102 ¶¶ 79, 80. Therefore, we are persuaded by Petitioner’s argument and evidence that Heath discloses “(a) a first electrically conductive material formed in and/or on a surface of a substrate” and “(b) . . . a second electrically conductive material formed on the substrate,” as recited in claim 8.” slip op. at 18

  Patent outcomesUS 6,784,552 unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,784,552

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.