• CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentable
  PTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand

  Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34

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

    “Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38

  Patent outcomesUS 10,647,861 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,647,861
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–3 were not shown unpatentable under any of five § 103 grounds because Petitioner failed to establish sufficient motivation to modify or combine the prior art.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “A petition must identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3) Here, Petitioner merely provides general assertions about multiple references, without clearly identifying how, or why a POSITA would have been motivated, to modify the processes disclosed in those references to arrive at the claimed invention. Thus, the Petition does not state with particularity that Saxler’s particular technique for etching is to be used instead of Beach’s etching step when substituting Beach’s self-aligned process for Saxler’s two mask process. Nor does the Petitioner provide a sufficient reason, absent hindsight, why a POSITA would have been motivated to combine the references to result in a process that forms Saxler’s Modified Figure 1A. Thus, for these additional reasons, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Saxler, Beach, and Shenoy.” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Both parties agree that the differences between the definitions do not impact the analysis. Resp. 11; Reply 2. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’347 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’347 patent and the prior art. We also note that our Decision would be the same under either parties’ definition.” slip op. at 13

  • Expert testimonyOther

    “Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “remove the recess in Saxler Figure 1A to arrive at the allegedly enhancement mode transistor of Modified Figure 1A. Contrary to Petitioner’s assertions in its Reply and at the hearing, the Petition makes no argument that a POSITA would have removed the recess from Saxler Figure 1A to realize the benefits of an enhancement mode transistor. See Reply 4–5; Pet. 24–68. Rather, the Petition merely asserts that a POSITA would have understood that the gate recess of Figure 1A is optional without providing any persuasive reason why a POSITA would have removed the gate recess but retained the sloped sidewalls of Figure 1A. Pet. 25, 40, 45. For example, Petitioner asserts that Saxler’s gate contact may be “recessed or non-recessed” and that when the gate recess shown in Figure 1A is not utilized, Saxler would have the structure of Saxler Modified Figure 1A. Pet. 25 (citing Ex. 1003 ¶ 81; Ex. 1007 ¶ 52, 66); see also Pet. 40, 45 (citing Ex. 1007 ¶ 52). Neither of these paragraphs provide sufficient motivation to a POSITA to remove the gate recess from Saxler Figure 1A. Saxler paragraph 52 states: Exemplary devices according to some embodiments of the present invention are schematically illustrated in FIGS. 1A through 6. Thus, while embodiments of the present invention are described herein with reference to a recessed gate structure or a non-recessed gate structure, other embodiments of the present invention may include or not include a gate recess. Accordingly, embodiments of the present invention should not be construed as limited to the particular exemplary embodiments described herein but may include any suitable structure having a cap layer and/or passivation layer as described herein. Ex. 1007 ¶ 52. Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

  Patent outcomesUS 9,748,347 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,748,347
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. 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)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

  The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9

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

    “1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12

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

    “As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentable
  PTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 13–17 were not shown unpatentable: Lee-based grounds fail on the stackable add-on layer limitation, and Watanabe-based grounds fail on nonvolatile memory, enablement, or motivation to combine.

  RulingsFinal written decision

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

    “meaning in the art. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (stating that, absent an accepted meaning in the art, “we construe a claim term only as broadly as provided for by the patent itself”). Thus, we must attempt to discern the meaning of this term from the claim language itself and from the remainder of the intrinsic record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate.” slip op. at 10

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

    “As discussed above, we construe “stackable add-on layer” to not include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. See Pet. 52 (asserting that in Lee “the layers of the array are directly deposited on the layers of each underlying level, and the array is deposited on the interlayer insulating layer formed over a substrate”); see also id. at 70 (“Lee discloses forming vertical memory devices through layer-by-layer sequential deposition on the substrate . . . .”). Therefore, Petitioner does not show that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Claims 14 and 15 Claims 14 and 15 depend from claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments for these claims do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 54–59. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14 and 15 would have been obvious in view of Lee alone. E. Claims 16 and 17 over Lee and Endoh Petitioner contends the subject matter of claims 16 and 17 would have been obvious over the combined disclosures of Lee and Endoh. Pet. 59–69. Petitioner’s arguments with respect to these claims, however, do not remedy the deficiencies noted above with respect to Lee and its monolithic, sequentially deposited memory array. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 16 and 17 would have been obvious over Lee and Endoh.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “combined Lee and Watanabe to achieve improved integration density. Pet. 71. Petitioner concedes, however, that the benefits of Lee’s design related to 3-D integration and improved integration density would be obtained if Lee’s memory structures are formed using either Lee’s monolithic construction method or Watanabe’s alternative stacking method. Pet. Reply 13–14 (citing Ex. 1041 ¶ 34). Thus, we are not persuaded that improved integration density provides a sufficient rationale for Petitioner’s combination of Lee’s memory device and Watanabe’s stacking method. Petitioner argues that Watanabe’s stacking method “improves the accuracy of the wiring” because the wiring is made “for each planar member.” Pet. 72 (citing Ex. 1005, 6:1–3). Watanabe also states that its disclosed methods provide “a low interconnection wire resistance.” Ex. 1005, 6:20–23. Petitioner does not, however, explain sufficiently how Watanabe’s stacking method would improve Lee’s device. For example, Petitioner does not address whether the alleged wiring benefit already existed in Lee’s monolithic array or explain how this benefit would also apply to Lee’s particular memory array, which differs in construction and elements from Watanabe’s device. This diminishes Petitioner’s benefits-based motivation to combine arguments. In general, a petitioner need not demonstrate that a particular alternate method would improve a prior art device in order to show a motivation to combine. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023); see Pet. Reply 20 (citing Intel). But here, Petitioner affirmatively invokes improvement of Lee’s device as a reason for the combination, and we must evaluate Petitioner’s contention. Moreover, any relative lack of improvement or benefits must be weighed against any problems the alternative method would introduce. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795–96 (Fed. Cir. 2021) (noting that simultaneous advantages and disadvantages to a proposed combination must be analyzed to determine whether the disadvantages “outweighed any reason to combine”). Here, as discussed above in more detail with respect to the ground based on Watanabe, the evidence shows that one of ordinary skill in the art would have expected Watanabe’s bonding temperature of 900– 1000° C to damage the electronic devices in an underlying substrate. Ex. 2029 ¶¶ 75–76; Ex. 2028, 123:13–124:7; Ex. 2027, 715. The expected damage to Lee’s device, when balanced against the limited evidence of a benefit to the combination,7 outweighs the reason to combine Lee and Watanabe set forth in the Petition. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious over Lee and Watanabe. 2. Analysis – Claims 14 and 15 Claims 14 and 15 both depend directly from independent claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments with respect to claims 14 and 15 do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 73. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that these claims would have been obvious over Lee and Watanabe.” slip op. at 40

  • Expert testimonyPatent owner expert creditedOther

    “We credit the testimony of Dr. Przybylski that one of ordinary skill in the art would have understood that Watanabe’s stacked structure would be severely impacted if bonded at a temperature above 900° C, as disclosed in Watanabe. Ex. 2029 ¶¶ 76–77. Dr. Przybylski’s opinion is supported by Dr. Lee’s testimony (Ex. 2028, 123:13–124:7, 125:6–126:7), as well as Watanabe (Ex. 1005, 6:6–14) and Batude (Ex. 2027, 715). As further discussed below, we find that Petitioner has not rebutted Patent Owner’s showing of nonenablement, and Patent Owner has carried its burden to demonstrate that Watanabe was not enabled for bonding temperatures of 900–1000° C, as of the 2004 filing date of the ’702 patent.” slip op. at 32

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6

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

    “We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7

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

    “PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00745 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 15–20 and 22–33 were not shown unpatentable because Petitioner did not adequately explain how the proposed combination would use active and non-active chip select signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working the field,” and Petitioner identifies particular knowledge that a person of ordinary skill in the art would have had. Pet. 3–4 (citing Ex. 1003 ¶ 52).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “As outlined above, Petitioner presents reasoning as to why a person of ordinary skill in the art would have included chip select signals in Halbert’s Figure 4 device. See Pet. 20–31 (addressing limitations 15.4 and 15.5). But Petitioner’s contentions about the use of chip select signals do not address sufficiently how Halbert’s Figure 4 device would operate with active and non-active chip select signals, as recited in claim 15. Indeed, as Patent Owner points out (PO Resp. 12), Petitioner’s contentions for limitation 15.6 only rely on Halbert’s Figure 2 prior art device. See Pet. 31–32. Petitioner’s lack of explanation as to how active and non-active signals would affect the operation of Halbert’s Figure 4 device is significant, as explained below.” slip op. at 12

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Samsung Electronics Co., Ltd. v. Lynk Labs, Inc.No claims unpatentable
  PTAB · May 25, 2023 · IPR2022-00101 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–7, 11, 12, and 14 were not shown unpatentable: the asserted obviousness combinations failed to establish required LED voltage matching or a clear, workable combination.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We are persuaded that Patent Owner’s proposal is more consistent with the problems and solutions in the ’583 patent and prior art of record. We agree that Petitioner’s proposal is overbroad in that it encompasses artisans without LED circuit design experience (“and two or more years of experience with LED devices and/or related circuit design . . .” (emphasis added)). Patent Owner’s definition, in contrast, requires “two or more years of experience with LED devices and related LED circuit design.” We therefore adopt Patent Owner’s definition of the level of skill, but we note that the outcome here would not have changed had we adopted Petitioner’s level of skill.” slip op. at 7

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

    “preliminarily agreed with Patent Owner that “substrate” may mean “a surface where ‘LEDs, capacitors and/or resistors are formed or mounted.’” Pet. 7; Dec. 19 (quoting Prelim. Resp. 22). We instructed the parties to address the meaning of “substrate” more fully at trial. Dec. 19–20 n.13. Post-institution, the parties propose the following competing constructions for the term “substrate”:” slip op. at 8

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

    “(2) Our analysis We agree with Patent Owner. Patent Owner’s plain reading of limitation 1(c) is correct, and under this reading, the combination of Shackle and Birrell fails to disclose or suggest limitation 1(c). Limitation 1(c) states in part: “at least one LED circuit having any number of LEDs . . . needed to approximately match the forward voltage drop of a first input voltage to the LED driver.” Ex. 1001, 27:22–25 (emphasis added). We have omitted the language “connected in series or series parallel” to highlight the grammatical relationship between the noun phrase “any number of LEDs” and the verb phrase “needed to approximately match.” The plain reading of this limitation is that the at least one LED circuit has any number of LEDs needed to approximately match the forward voltage drop of the LED driver input. Petitioner’s reading, that “the at least one LED circuit,” rather than “any number of LEDs,” must approximately match the forward voltage drop of the LED driver input, is strained and not grammatically plausible. See Reply 1–3. Petitioner does not assert there is an express disclaimer or disavowal in the specification that supports its position; Petitioner instead relies on examples disclosed in the specification to support its faulty interpretation of limitation 1(c). See Reply 2–3. These arguments are unpersuasive. It is axiomatic that we must not “limit[] the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). Not only that, but Petitioner’s citations to the specification better support Patent Owner’s position. In Petitioner’s view, the specification requires other non- LED components to be combined with one or more LEDs to “appropriately match the voltage.” Reply 2. The main example Petitioner relies on describes 38 LEDs having a total voltage drop of 114 V in a circuit with a bridge rectifier having a 6 V voltage drop. Id. at 2–3 (citing Ex. 1001, 16:64–17:7). Yet the 114 V voltage drop of the LEDs alone “approximately matches” the input voltage of 120 V, without the contribution of the bridge rectifier (6 V). Id. Indeed, 114 V out of 120 V is a 95% match. Thus, this example supports Patent Owner’s view that it is the voltage drop of the LEDs themselves, not the LED circuit as a whole, that must approximately match the LED driver input. See Sur-reply 6–7.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “combination. The first is that the proposed combination is not at all clear. Although Petitioner need not propose a bodily incorporation of different embodiments, Petitioner must provide a “reasoned analysis” explaining what the combination is. See DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1377 (Fed. Cir. 2018); In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (“We must be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”) (citation omitted). But the Petition never explains how or where Piepgras’s glass substrate would be combined with Piepgras’s alleged flexible substrate, the rope light of Figure 31. At most, Petitioner suggests incorporating the illumination device 500 of Figure 42 in the rope light of Figure 31. Pet. 48 (“Piepgras provides for configurations where a reflective platform (reflective substrate) mounts lighting system 500 in a manner applicable generally to the inventions of Piepgras . . ., and thus including the rope lighting application discussed above.”). As for the glass substrate, Petitioner merely states that “a POSITA would have found it predictable to configure the Shackle-Piepgras device to implement a flexible substrate mounted to the glass substrate, wherein at least one of the plurality of LED packages is mounted to the flexible substrate.” Id. (citing Ex. 1002 ¶ 150). This vague statement just parrots the claim language and does not explain anything about how the glass substrate would be included in the combination.” slip op. at 28

  Patent outcomesUS 10,750,583 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,750,583
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 and 15–17 were not shown unpatentable because the asserted combinations did not disclose the construed network-based portal residing on a server side of a network.

  RulingsFinal written decision

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

    “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 11. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 19:63, 20:4, 20:6, 20:11, 20:15–16, 20:21–22, 20:29–30, 20:42–43, 20:46–47; see PO Resp. 19 (Patent Owner contending that, because of the repeated recitation of “network-based portal” throughout the body of independent claim 1, the “preamble therefore breath[e]s life and meaning into claim 1”). Contending that a “network-based portal” is “a web page or interface that connects multiple users to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 36. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. Because the deficiency in Petitioner’s showing applies to the claims that depend from claim 1 because they inherit the “network-based portal” limitations, we also conclude that Petitioner does not show that any of claims 2–5, 15, or 17 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 7–9 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; nor that” slip op. at 38

  Patent outcomesUS 10,708,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,708,727
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00202 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted obviousness grounds did not show a network-based portal residing on the server side of a network.

  RulingsFinal written decision

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

    “Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 24. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31, 20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 1). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 11 and 19. See Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on analysis of claim 1). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 1– 20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.” slip op. at 36

  Patent outcomesUS 10,142,810 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,142,810

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.