• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Dec 3, 2018 · IPR2017-01390 · APJ Jeffrey W Abraham · IPR · Final written decision

  The Board held that claims 1–18 were not shown unpatentable because the prior art did not establish the claimed volume concentration in the formed magnetic layer.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “define the term “volume concentration.” In the context of the ’331 patent, “volume concentration” refers to the volume concentration of the magnetic particles in the formed magnetic layer.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording, or (2) a Master’s degree or higher in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 12; Ex. 1017 ¶ 60. Although Patent Owner does not expressly define the appropriate level of skill in the art in the Patent Owner Response or its Supplemental Response, Patent Owner’s declarant, Dr. Bain, presents a definition of a person of ordinary skill in the art in his declaration that is nearly identical to Petitioner’s definition. Ex. 2001 ¶ 44. In view of this, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “information, is not sufficient evidence to establish that Mori discloses the “volume concentration” recited in claim 1. Patent Owner does not dispute that there is some magnetic alloy present “in the magnetic layer” of Mori. The relevant question, however, is how much and how Mori’s disclosed values were determined. Unlike the term “volume concentration,” for which the parties offered undisputed evidence regarding accepted meanings of the term in the art (i.e., packing fraction and pigment volume concentration), we have not been directed to similar evidence regarding the phrase “fill rate”/“filling rate” in Mori. Thus, although Mori states “[t]he filling rate by volume of the strongly magnetic alloy powder in the magnetic layer can be equal to or higher than 30%” (Ex. 1003 ¶ 11 (emphasis added)), Petitioner has not offered sufficient evidence demonstrating that the term “filling rate” in Mori refers to a final product-based value. As a result, we find that this language in Mori does not establish, by a preponderance of evidence, that Mori discloses the “volume concentration” recited in claim 1.” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For all of the foregoing reasons, we find that Petitioner has failed to demonstrate, by a preponderance of evidence, that the combined teachings of Aonuma and Mori disclose or suggest “[a] dual layer magnetic recording medium comprising . . . a magnetic upper recording layer formed over [a] lower support layer, the magnetic upper recording layer comprising a volume concentration of at least about 35% of a primary magnetic particulate pigment,” as recited in independent claims 1 and 16. Ex. 1001, 11:14–20, 12:25–31. Claims 2–15, 17, and 18 depend from claim 1 or claim 16, and, therefore, include the “volume concentration” limitation of claims 1 and 16. As a result, we find that Petitioner has failed to demonstrate that Aonuma and Mori disclose or suggest each limitation of claims 1–18, and, therefore, has not demonstrated by a preponderance of evidence that claims 1–18 are unpatentable as obvious over Aonuma and Mori.” slip op. at 26

  Patent outcomesUS 7,115,331 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,115,331
• Intel Corporation v. Godo Kaisha IP Bridge 1Rehearing denied
  PTAB · Nov 27, 2018 · IPR2018-00661 · APJ Melissa A Haapala · IPR · Rehearing

  The Board denied Intel’s rehearing request, leaving institution denied for claims 1–9 and 17–22 because the petition did not show a reasonable likelihood of success on its asserted grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “procedural rights. Petitioner had several options available to address the claim construction position set forth in Patent Owner’s Preliminary Response. For example, Petitioner could have sought leave to file a reply to Patent Owner’s Preliminary Response. See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to the preliminary response . . . .”). But Petitioner did not seek our permission to file such a reply. Petitioner also was entitled to file a request for rehearing to identify any matter we misapprehended or overlooked when construing the challenged claims. See 37 § C.F.R. 42.71(d). Although Petitioner did submit a request for rehearing, it does not assert in its request that there is any error in the claim construction set forth in our Decision. See Req. Reh’g. And while Petitioner had several options available to respond to Patent Owner’s claim construction, Petitioner was not entitled to submit claim construction briefing after the Decision Denying Institution had been entered. Accordingly, we discern no violation of procedural rights in our denial of such briefing. See Ex. 1014.” slip op. at 3

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

    “We are also not persuaded of any error in our Decision that Petitioner failed to demonstrate a reasonable likelihood of prevailing in establishing independent claims 1 and 17 would have been obvious over the asserted Cederbaum-Lee combination. See Dec. 13–16. In its rehearing request, Petitioner now newly argues that we overlooked evidence that AAPA from the ’950 patent discloses performing the first three steps of claims 1 and 17 in sequential order. Req. Reh’g 6–9. However, Petitioner did not set forth any challenge to claims 1 and 17 in its Petition based on AAPA, but rather only challenged these claims based on the Cederbaum–Lee combination. See Paper 2, 6, 24–28. A petition must include the specific statutory grounds on which the challenge to the claim is based and the patents or printed publications relied upon for each ground. 37 C.F.R. § 42.104(b)(2); see also SAS Inst., Inc. v. Iancu, 138 S.Ct 1348, 1355 (2018) (explaining that it is the petitioner that gets to define the contours of the proceeding by describing each claim challenged and the grounds on which the challenge to each claim is based). Petitioner acknowledges “it did not brief how the AAPA discloses how the AAPA discloses this claim construction in its petition.” Req. Reh’g 6. Because such a challenge was not presented in the Petition, it could not have been overlooked in our Decision.1” slip op. at 3

  • BurdenDecided for patent owner

    “failed to demonstrate a reasonable likelihood of prevailing in establishing independent claims 1 and 17 would have been obvious over the asserted Cederbaum-Lee combination. See Dec. 13–16. In its rehearing request, Petitioner now newly argues that we overlooked evidence that AAPA from the ’950 patent discloses performing the first three steps of claims 1 and 17 in sequential order. Req. Reh’g 6–9. However, Petitioner did not set forth any challenge to claims 1 and 17 in its Petition based on AAPA, but rather only challenged these claims based on the Cederbaum–Lee combination. See Paper 2, 6, 24–28. A petition must include the specific statutory grounds on which the challenge to the claim is based and the patents or printed publications relied upon for each ground. 37 C.F.R. § 42.104(b)(2); see also SAS Inst., Inc. v. Iancu, 138 S.Ct 1348, 1355 (2018) (explaining that it is the petitioner that gets to define the contours of the proceeding by describing each claim challenged and the grounds on which the challenge to each claim is based). Petitioner acknowledges “it did not brief how the AAPA discloses how the AAPA discloses this claim construction in its petition.” Req. Reh’g 6. Because such a challenge was not presented in the Petition, it could not have been overlooked in our Decision.1 We conclude that Petitioner has not identified any matter that we misapprehended or overlooked, much less in a manner that constitutes an abuse of discretion.” slip op. at 3

  None
  Patents in suitUS 6,709,950
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 15 and 17 are unpatentable as anticipated by Ishikawa; the petitioner did not show claims 1–11, 16, and 18–20 unpatentable over Aonuma or Aonuma and Abe.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) at the time of the ’774 patent would have had “a bachelor’s degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 13 (citing Ex. 1003 ¶ 65; Ex. 1018 ¶ 60). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Decision on Institution, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 9

  • Expert testimonyPetitioner expert creditedMixed

    “considerably greater than Ishikawa’s stylus load of 50–300 μN (Ex. 1015 ¶ 45). The Talke Declaration does not address this discrepancy, and Dr. Talke stated during his deposition that reducing the stylus load would reduce scratching of the magnetic tape surface. Ex. 1030, 108:14–19 (“Q: Would reducing the contact pressure for the stylus instrument reduce the scratching of the magnetic tape surface by the stylus? A: Yes, it would, but you have to remember the other problem is the diameter and size of the stylus.”). Moreover, Petitioner provides evidence that it was not uncommon to use stylus-type profilometers to measure the properties of magnetic tape, even after Bhushan was published in 1996. See Reply 6. In particular, Petitioner points to Saliba,6 which describes using a stylus-type profilometer, under identical conditions to those used in Ishikawa, to measure the surface characteristics (including peak-to-valley roughness) of the backcoating of magnetic tape. Ex. 1027, 7:28–40, 57–60. Petitioner further points to Ohno,7 which also describes using “a stylus type 3D profilometer in accordance with JIS B0601” to measure the surface roughness characteristics of magnetic tape. Ex. 1028 ¶ 36; see also Ex. 1015 ¶ 45 (Ishikawa explaining that surface roughness characteristics were measured “in accordance with JIS-B0601-1994”); Ex. 1027, 7:28–39 (Saliba explaining that surface roughness characteristics where measured “in accordance with JIS-B0601-1994”). Accordingly, we are persuaded that the 6 US Patent No. 6,558,774 B1, issued May 6, 2003 (Ex. 1027). 7 U.S. Patent App. Pub. No. US 2005/0175866 A1, published Aug. 11, 2005 (Ex. 1028). evidence establishes that a stylus-type profilometer is a suitable device for measuring the surface characteristics of magnetic tape.” slip op. at 19

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

    “We agree with Petitioner that Ishikawa teaches “peak-to-valley roughness less than about 325 nm” as recited in claim 15. Pet. 24–25; Reply 5–8; Ex. 1003 ¶ 216. In particular, Ishikawa teaches a backcoating layer of a magnetic tape that has a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm.” Ex. 1015 ¶ 44. Ishikawa provides five example embodiments of its magnetic tape, and reports the measurements of a number of characteristics of the backcoat layer for each example, including peak-to-valley roughness Rz. Id. ¶¶ 120–134, Table 1. Ishikawa discloses that peak-to-valley roughness Rz was measured using a stylus-type profilometer under the following conditions: Stylus: diameter: 1.5 to 2.5 μm; curvature: 60º Contact pressure: 50 to 300 μN Cut-off length: 80 μm Sampling length: 80 μm Assessment length: 400 μm Id. ¶¶ 45, 49. The reported peak-to-valley roughness Rz values for the five examples ranged from 58 to 87 nm, as shown in the annotated portion of Ishikawa Table 1 from the Petition, reproduced below: Pet. 24 (citing Ex. 1015, Table 1). The annotated portion of Ishikawa Table 1 shows the results for the measured characteristics of the backcoat layer of Examples 1–5, with the peak-to-valley roughness Rz values highlighted by a red box. Id. Because Ishikawa teaches that the backcoating layer of its magnetic tape should have a peak-to-valley roughness “Rz of 40 to 250 nm, particularly 50 to 200 nm,” and because Ishikawa presents examples of magnetic tape with backside surfaces having a peak-to-valley roughness of 87 nm or less, Ishikawa discloses “a peak-to-valley roughness less than about 325 nm” as recited in claim 15.” slip op. at 16

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · Oct 22, 2018 · IPR2017-01267 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  The Board held claims 1–13 and 15–20 not shown unpatentable over Law and Sasaki because the evidence did not establish the claimed surface properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in materials science, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience” in industry or academic research relating to magnetic tape, or “a master’s degree or higher” in the same fields and at least three years of experience relating to magnetic tape. Pet. 17–18 (citing Ex. 1003 ¶ 65). Patent Owner does not dispute Petitioner’s assessment in its Response, and Dr. Talke agrees that it “is reasonable.” Ex. 2026 ¶¶ 25–26. Petitioner’s assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill in the art. B.” slip op. at 8

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

    “reasonable construction in light of the specification of the patent in which [the claims] appear[].” 37 C.F.R. § 42.100(b) (May 2, 2016); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of the Institution Decision, we determined that, based on the record at that time, no claim term required express construction (Dec. on Inst. 7), and we see no reason to modify that determination in light of the record developed during trial. C.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The evidence, however, does not establish that a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0 necessarily results from reducing the size and prevalence of the protrusions on the backside surface of Law’s magnetic tape. As Petitioner agrees, Law and Sasaki do not discuss skew and kurtosis values. See Pet. 29 (stating that Law does not expressly disclose skew or kurtosis values); Reply 23 (recognizing that neither Law nor Sasaki contain express disclosures of skew and kurtosis); Tr. 18:22–23 (Petitioner’s counsel noting that there are no reported skew and kurtosis values in Law or Sasaki). Thus, Petitioner relies on Mr. Isobe’s testimony to establish that reducing the protrusions on Law’s backside surface would result in a skew less than about 0.5 and a kurtosis less than about 4.0. See Pet. 45–49; Ex. 1003 ¶¶ 79–81, 170–174. In that regard, Mr. Isobe testified as follows:” slip op. at 17

  • Obviousness (§103) › KSR rationalesNot shown unpatentableNot shown unpatentable

    “At best, the evidence establishes that reducing protrusions in Law’s backside coating may result in the surface approaching a Gaussian distribution (namely, a skew of 0 and a kurtosis of 3). See Ex. 1003 ¶ 171 (“By reducing the number of peaks the overall surface may become closer to a Gaussian distribution, which by definition has a skew of zero.” (emphasis added)), ¶ 174 (“As the frequency of large protrusions is reduced, the skew of the backcoat surface approaches 0 and the kurtosis becomes closer to 3.” (emphases added)). There is no evidence of record, however, that establishes the skew and kurtosis values of Law’s backside coating before reducing the protrusions as Petitioner proposes. While it is possible that reducing Law’s protrusions could result in skew and kurtosis values within the claimed range, it is also possible that reducing the protrusions could result in a surface that approaches a Gaussian distribution but still has a skew above 0.5 and a kurtosis above 4.0. See Ex. 2026 ¶¶ 36–60, 77–83, 90; see also PAR Pharm., 773 F.3d at 1195 (Inherency “may not be established by probabilities or possibilities.”). Thus, even if reducing the protrusions on Law’s backside coating caused the surface to approach a Gaussian distribution, that is not sufficient to establish that it necessarily results in a skew less than about 0.5 and a kurtosis less than about 4.0 as claimed. The skew and kurtosis values recited in claims 1 and 20 are not simply properties possessed by any backside coating that otherwise satisfies the structural limitations. Instead, they are recited as limitations on which magnetic recording media fall within the scope of the claims. The evidence of record does not establish that reducing the protrusions in Law’s backside coating, as taught by Sasaki, “would have naturally led to a backside surface having a skew less than about 0.5 and a kurtosis less than about 4.0” as Petitioner contends. Pet. 45. Accordingly, on the record before us, we find that Petitioner has not established that claims 1 and 20 would have been obvious over the combined teachings of Law and Sasaki.” slip op. at 21

  Patent outcomesUS 7,029,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774
• Sumitomo Electric Industries, Ltd. v. United Technologies CorporationNo claims unpatentable
  PTAB · Sep 12, 2018 · IPR2017-00966 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1–4, 8–13, 16, and 17 were not shown unpatentable under either § 103 ground because SEI did not establish a sufficient reason to combine the references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “We disagree. As the Federal Circuit has observed, “[a] preamble is not a claim limitation if the claim body ‘defines a structurally complete invention . . . and uses the preamble only to state a purpose or intended use for the invention.’” Georgetown Rail, 867 F.3d at 1236 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). The fact that the claims were amended to include storage tanks and recirculation loops actually cuts against UTC’s position, as the claim as amended describes a structurally complete invention and reliance on the preamble for this structure is unnecessary. UTC also points to the fact that the Examiner amended the preamble during prosecution, from merely reciting a “flow battery” to a “redox flow battery.” PO Resp. 15. While “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art” (Catalina Mktg., 289 F.3d at 809) may be a reason to view the preamble as limiting, UTC directs us to no evidence here that the Examiner intended the amendment to distinguish the claims from the prior art. Indeed, as UTC acknowledges in its Response, a person of ordinary skill in the art would have understood the ’243 patent to use “‘redox flow battery’ and ‘flow battery’ to mean the same thing.” PO Resp. 13 (emphasis added). If, as UTC concedes, the Examiner’s amendment merely substituted one synonym for another, the amendment could not have changed the scope of the claim or distinguished over the prior art. For these reasons, we conclude that the preamble of the claims is not limiting, and, therefore, we need not construe the term redox flow battery.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “SEI contends that the person of ordinary skill should not be limited to only a degree in chemistry or chemical engineering, because the claimed features of the flow batteries are not directed to chemistry. Pet. Reply 7. We agree, and adopt SEI’s definition of the relevant educational background. While the parties differ as to the number of years of experience in working with flow batteries, we do not consider the difference (one versus two years) to be significant. We find that a person of ordinary skill in the art at the time of invention would be a person with a degree in chemistry, physics, chemical engineering, electrical engineering, or mechanical engineering, who has at least one year of experience designing or testing flow batteries so as to obtain functional knowledge of their structure and operation. We have reviewed the level of skill reflected in the prior art and consider it consistent with this definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “evidence. Our Rule 42.64 provides that a motion to exclude is necessary to preserve any objection, and refers to those objections as “objections to the admissibility” of evidence. See 37 C.F.R. § 42.64(a), (c). The Board’s Trial Practice Guide further explains that a motion to exclude “must explain why the evidence is not admissible.” See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767. In other words, objections to the timing of late-arising evidence or procedural infirmities are not proper for a motion to exclude. For this reason, the objections raised in UTC’s motion to exclude are improper. First, UTC argues that Exhibit 1066 is untimely under 37 C.F.R. § 42.63(b), which requires a translation of a foreign-language document to be filed with the document. Mot. 5. By UTC’s reasoning, because the Supplemental Declaration revisits Mr. Yagaeshi’s prior translation, but was not submitted with the foreign-language document, it violates the Board’s rules. Id. As this is clearly a procedural objection to the timing of the evidence, as opposed to its admissibility, we deny the motion to exclude on this basis. In any event, even if it were procedurally proper, we would not exclude the Supplemental Declaration on this basis. The Board’s Rule requires only that the original foreign-language document be accompanied by a translation, and there is no dispute that is what happened here. We see nothing in Rule 42.63(b) that prohibits a party to revisit, or even modify, its translation at a later date, given sufficient notice and opportunity to respond by the opposing party. Here, we granted UTC the opportunity to submit its own responsive declaration and address the translation issue at the oral hearing, and UTC did so.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “character as a minus sign, which is consistent with Mr. Yagaeshi’s original translation, makes more grammatical sense in the context of the sentence. We take note of the fact that SEI only changed its position on the translation—and asked Mr. Yagaeshi to correct his prior translation—once UTC made arguments based on the original translation that might be detrimental to SEI’s case. While it is conceivable that SEI only became aware of the alleged error once UTC called attention to it in the Response, we consider it fair to hold SEI to its original interpretation, especially given that that original interpretation is in agreement with Mr. Baldwin’s translation, which has remained consistent since at least 2016. For these reasons, we will interpret the disputed passage of JP228 to read “the potential was negative 0.4V.”” slip op. at 19

  Patent outcomesUS 9,166,243 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,166,243
• Fujifilm Corporation v. Sony CorporationNo claims unpatentable
  PTAB · May 16, 2018 · IPR2017-00360 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Takahashi and Meguro did not anticipate, and the asserted combinations did not render the claims obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “We note, first, that the specification of the ’501 patent expressly defines the term “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction.” Ex. 1001, 3:33–35. Petitioner asks us to construe the term “biaxially tensilized” as it is defined in the specification. Pet. 14. Because Patent Owner has acted as its own lexicographer for the term “biaxially tensilized,” we accept the express definition set forth in the specification. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1980).” slip op. at 6

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

    “Applying the broadest reasonable interpretation, we construe the term “tensilized” to mean “stretched.” The specification defines “biaxially tensilized” as “having been subjected to tensilization in both the machine direction and the crossweb direction,” indicating that tensilization has a directional component, i.e., that tensilization can occur in a machine direction, or in a crossweb direction, or both. Ex. 1001, 3:33–35. No other properties such as heating or heat setting are mentioned in the specification’s definition of “biaxially tensilized.” Attempting to substitute the term “heating” or “heat setting” for the term “tensilized” in the definition of “biaxially tensilized” is nonsensical—it does not appear that a substrate could be, for example, “heated” in a machine direction or “heat set” in a crossweb direction. The specification’s paragraph describing “film production,” upon which both parties rely, does not mention tensilization ipsissimis verbis. Ex. 1001, 5:18–31. This paragraph’s description states that film production “typically involves” the steps identified in the paragraph, indicating that not all steps are required at all times. Id. Dictionary evidence indicates that “tensile,” the root word at issue, means “capable of being stretched.” See Ex. 1026, 6. Extrinsic evidence indicates that substrates can be cold-stretched, i.e., stretched without heat. See generally Ex. 1022. Construing “tensilized” to mean “stretched,” in view of broadest reasonable interpretation standards, does not mean that a heating or a heat-setting component must be absent, but allows for the presence of other steps without requiring them to be part of the construction. Thus, we construe the term “tensilized” to mean “stretched.” B. Level of Ordinary Skill in the Art” slip op. at 6

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

    “tensilized,” “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment.” Pet. 14–16. For purposes of our Institution Decision, we determined that no claim term required express construction. Dec. 5. Patent Owner, in its Response, proposes that we construe the preamble and the term “tensilized.” PO Resp. 7–10. For purposes of this Decision, we determine that the terms “longitudinal direction” and “crossweb direction,” “degrees,” and “ferromagnetic pigment” are not in controversy, and require no express construction. We discuss, here, the terms “biaxially tensilized” and “tensilized.” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “undisputed contention that a person of ordinary skill in the art would have been a person with (1) a bachelor’s degree in materials science, physics, electrical engineering, mechanical engineering, chemistry, or a closely related field, and at least five years of experience in the field of magnetic recording or (2) a master’s degree or higher in those fields, or a closely related field, with an emphasis in magnetic recording, and at least three years of experience in the field of magnetic recording. Pet. 13. Patent Owner does not, in its Response, appear to dispute this definition. In light of the evidence before us, we adopt Petitioner’s definition of one of ordinary skill in the art. We also find that Petitioner’s proposed level of skill in the art is reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C. Overview of the Asserted References” slip op. at 7

  Patent outcomesUS 6,979,501 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,979,501
• Samsung Electronics Co., Ltd. v. Promos Technologies, Inc.All claims unpatentable
  PTAB · Apr 11, 2018 · IPR2017-00037 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–6, 8–15, and 17–20 are unpatentable under the stated § 102 and § 103 grounds; the motion to amend is denied for lack of written-description support and because the substitute claims are obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “We do not find that there has been an unambiguous disclaimer or disavowal of claim scope as suggested by Patent Owner. With respect to claims 1 and 10, the first sentence of applicants’ statement about Endo is a general allegation that Endo does not disclose the claim element “introducing an inert gas into the titanium nitride sputtering chamber to cool the wafer by fanning the wafer with the inert gas to a temperature sufficiently low to reduce thermal stresses between the titanium nitride layer and the Al-Cu layer.” Ex. 1003, 66. This statement cannot be read to disclaim cooling processes where gas is blown under the rear surface of the wafer.” slip op. at 11

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

    “3. “fanning the wafer” The claim term “fanning the wafer” is not expressly defined in the Specification. The Specification, however, does describe “the metallization process according to an embodiment of the present invention” as including a step of fanning the wafer: Next, at step 34, the wafer 100 is transferred to the titanium nitride sputtering chamber 16 and inert gases are injected into the chamber 16 for fanning the high-temperature wafer 100 until the temperature of the wafer 100 is reduced to about 60– 80º C. The inert gas is introduced into the chamber 16 at a temperature of substantially less than 260–280º C., and is typically provided at about room temperature. The inert gas may be nitrogen or argon. In specific embodiments, the flow rate is about 80–120 sccm, and the flow time is about 20–30 seconds. The inert gas may be injected directly onto the wafer 100 or near the wafer to fan the wafer until it is cooled to the desired temperature. Ex. 1001, 3:20–31 (emphasis added). The Specification also teaches that, “[i]n some embodiments,” “[t]he inert gas is injected into the titanium nitride sputtering chamber to fan the wafer until the wafer is cooled to a temperature of about 60–80º C.” Id. at 2:10–16; see also id. at 2:48–52 (“The wafer may be cooled after transferring the wafer to the titanium nitride sputtering chamber, for instance, by introducing the inert gas into the titanium nitride sputtering chamber to fan the wafer with the inert gas.”). Accordingly, we determine based on the Specification, claim language, and evidence from the complete record before us that, under the broadest reasonable interpretation and giving the words their plain and ordinary meaning consistent with the Specification, “fanning the wafer” means “injecting gas directly onto or near the wafer.” B.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe meaningful differences between the parties’ assessments of a person having ordinary skill in the art. We further note that both assessments appear consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our determination regarding the patentability of the challenged claims does not turn on the minor differences between these definitions. We adopt Petitioner’s assessment, but note that our conclusions would be the same under Mr. Brahmbhatt’s assessment. C.” slip op. at 16

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

    “We agree with Petitioner that Yamada teaches “fanning the wafer” as recited in claims 1 and 18. In particular, Yamada describes an embodiment where silicon substrate 1 is cooled by releasing argon gas “over the rear face of the silicon substrate 1.” Ex. 1004 ¶ 28; see also id. ¶ 32 (“[I]t is also possible, after moving the substrate to the processing chamber for forming the TiN film 6, to release just the room-temperature Ar gas across the rear face of the silicon substrate 1 prior to forming the TiN film 6.”). Yamada further describes its method as “proactively cool[ing] the substrate by blowing a low-temperature inert gas against it.” Id. ¶ 35. Accordingly, we determine that Yamada discloses “fanning the wafer” as recited in independent claims 1 and 18.” slip op. at 24

  Patent outcomesUS 6,699,789 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,699,789
• Taiwan Semiconductor Manufacturing Company, Ltd. v. Godo Kaisha IP Bridge 1Rehearing denied
  PTAB · Mar 12, 2018 · IPR2017-01862 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, maintaining its institution-stage disjunctive construction of the interconnect limitation for challenged claims 1–3, 8, 10, 11, 13, 14, and 18.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “in the interconnect limitation and in SuperGuide and other cases cited in the Decision. We are not persuaded, based on the current record, that the use of the word “at” after “at least” changes the word that “one of” modifies, as Patent Owner contends. Id. Rather, the term “at” acts as a function word to indicate the presence of convex or concave portions. Thus, under the broadest reasonable interpretation of the interconnect limitation, “one of” modifies a choice between having convex or concave portions present at one or both side surfaces, the bottom surface, or all three surfaces, regardless of whether it is preceded by the phrase “at least at” or simply “at least.” See Dec. 11–12. We, therefore, maintain, based on the record at this time, that the broadest reasonable interpretation of the interconnect limitation is disjunctive, i.e., it allows for a choice between one or more side surfaces and the bottom surface. Id. at 7–12.” slip op. at 7

  • BurdenDecided for petitioner

    “Patent Owner also contends that we overlooked Petitioner’s failure to meet its burden under 37 C.F.R. § 42.104(b)(3)–(5). Req. Reh’g 8–10. We disagree. Under 37 C.F.R. § 42.104(b)(3), the petition must identify “[h]ow the challenged claim is to be construed.” As noted in our Decision, and reiterated above, Petitioner asserts that the broadest reasonable interpretation should apply to all claims. Paper 2, 10 (“Pet.”); Dec. 7 n.3. We determined that Petitioner’s position as to how the interconnect limitation “is to be construed” was clear in light of the arguments made in the Petition, specifically Petitioner’s contentions regarding the disclosure of the interconnect limitation in the prior art. See Dec. 7 n.3, 16; Pet. 24–25. For all of the foregoing reasons, we are not persuaded that we misapprehended or overlooked that (1) the cases the Board cites in support of its interpretation address a different limitation than present here; (2) the word “and” must be interpreted according to its customary conjunctive meaning absent a clear and explicit disjunctive definition in the intrinsic record, a definition that is missing in this proceeding; and (3) the Petitioner did not meet its burden to show how the interconnect limitation should be construed.” slip op. at 9

  Claim construction
  Patents in suitUS 7,265,450

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.