- PTAB · Dec 22, 2015 · IPR2014-00963 · APJ David C Mckone · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 1–16 were not shown unpatentable over the asserted obviousness grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Figure 6 is a detailed diagram of a TDM FIFO receiver. Ex. 1006, 10:34– 35. “The TDM slot counter 200 and enable DP-RAM 202 operate as for the TDM FIFO driver 180-1 shown in FIG. 5,2 to identify when the receiver 212 is to be active.” Id. at 10:36–39. When DP RAM Enable 202 of Figure 3 (or Figure 5) enables driver 208 to permit DP RAM Data 204 to assert data at a particular slot, the corresponding DP RAM Enable 202 of Figure 6 enables receiver 212 to remove data from the bus at the same time slot. Id. at 10:36–43. As with the DP RAM Enable 202 of Figure 3, the DP RAM Enable 202 of Figure 6 does not determine which slot is associated with which DSP. It simply allows data to pass through during an enabled time slot to FIFO Data 214, which clocks data into the DSP associated with the enabled time slot. Id. In the Decision, we found that “Petitioner and Dr. Stark do not explain persuasively how simply reprogramming DP RAM Enable 202 would provide a different mapping between the data stored in DP RAM Data 204 and the DSPs.” Dec. 27. Simply reprogramming the corresponding DP RAM Enable 202 of Figure 6 to coincide with the mapping of DP RAM Enable 202 of Figure 3 does not address this deficiency. The Decision did not discuss Figure 6 explicitly. Nevertheless, because Petitioner’s proposed re-programming of its DP RAM Enable 202 mirrored that of Figure 3’s DP RAM Enable 202, we implicitly rejected Petitioner’s arguments regarding” slip op. at 7
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“frequency hopping. Req. 4–5 (citing Ex. 1023, 33:6–13, 34:3–14, 43:12– 44:1). Petitioner did not make this argument in the Reply. Indeed, Petitioner made the opposite argument—criticizing the same testimony for stating that the ’480 patent does not disclose implementing the optional frequency hopping portion of GSM. Reply 5–6. We find that Dr. Wells has testified consistently that the portion of the ’480 patent quoted above “actually means . . . that it can support GSM, and then it characterizes GSM as a frequency hopping standard. It doesn’t say that it supports frequency hopping.” Ex. 1023, 34:10–14; accord Ex. 2007 ¶ 78. We continue to credit Dr. Wells’s testimony.” slip op. at 5
- Strike new argumentNew argument disregardedDecided for patent owner
“LLC, 805 F.3d 1064 (Fed. Cir. 2015). Req. 2, 13–15. Belden addressed the Board’s denial of a motion to exclude reply expert testimony as beyond the proper scope of a reply, as informed by our Office Patent Trial Practice Guide.3 805 F.3d at 1077–78. In upholding the Board’s denial, the Federal Circuit noted that “[e]vidence admitted in rebuttal to respond to the patent owner’s criticisms will commonly confirm the prima facie case. That does not make it necessary to the prima facie case.” Id. at 1079. Petitioner argues that it should have been permitted to present responsive evidence confirming the prima facie case it presented in the Petition. Req. 13–14. Petitioner’s second theory for combining the ’480 patent and GSM 05.02, however, is not designed to support or confirm the prima facie case it presented in the Petition. As explained above (taking into account Petitioner’s Figure 6 argument), and in the Decision (at 25), the prima facie case presented in the Petition was that a skilled artisan would have modified the ’480 patent simply by reprogramming the DP RAM Enable 202 mappings. Petitioner’s second Reply argument was that a skilled artisan would have modified different components of the ’480 patent “without any modification to the memory (DP RAM Enable) mapping 3 “While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. The Board will not attempt to sort proper from improper portions of the reply. Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). used.” Req. 14 (quoting Ex. 1022 (Stark Reply Decl.) ¶ 43).4 This is an attempt to argue an entirely new prima facie case. Thus, our refusal to consider Petitioner’s second reply argument was consistent with Belden and the Office Trial Practice Guide.” slip op. at 9
§ 103 obviousnessPatents in suitUS 6,952,408 - Universal Remote Control, Inc. v. Universal Electronics, Inc.No claims unpatentablePTAB · Dec 10, 2015 · IPR2014-01146 · APJ William A Capp · IPR · Final written decision
Claims 13–15 were not shown unpatentable because Dubil does not disclose the claimed configuration stored in and accessed by the entertainment device.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“As between the foregoing two possibilities, we think the latter construction is the correct one. The claims indicate that a configuration of the entertainment device is a construct that can be “downloaded” from a computer. Id., claim 13. It is also a construct that can be “access[ed] and use[d]” in association with a controlling device activity key commend value. Id. These attributes are more consistent with a set of executable instructions and data that is stored in memory than a physical state or configuration of the entertainment device after it has been configured. Id. at 6:38 (“finalized and stored”); 6:41 (“stored and associated”). In view of the foregoing we construe configuration of the entertainment device in claims 13 and 14 as referring to information stored in memory in the entertainment device that can be accessed and used to configure the entertainment device.” slip op. at 16
- ExcludeMotion to exclude, grantedGranted
“The admissibility of evidence in an IPR proceeding generally is governed by the Federal Rules of Evidence. See 37 C.F.R. § 42.62(a), Office Patent Trial Practice Guide, 77 Fed. Reg. 48758. Under Federal Rule of Evidence 611(c), leading questions should not be used on the direct examination of a witness except as may be necessary to develop the witness’ testimony. “A leading question is one that suggests to the witness the answer desired by the examiner.” McCormick, EVIDENCE § 6 (7th ed. 2013). Questions that begin, “Isn’t it true that” or “Don’t you agree that” typically suggest the answer and are leading. Other types of questions, such as questions that call merely for a yes or no answer or that ask the witness to choose between alternatives posed by the questioner, may or may not be leading, depending on the context in which the question is asked, the tone of voice employed, and the body language or conduct of counsel. See, e.g., United States v. Warf, 529 F.2d 1170, 1174 (5th Cir. 1976) (prosecutor improperly led witness to make identification by pointing at the accused).” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“We are not persuaded by Petitioner’s argument or evidence. Petitioner’s conclusion does not follow logically and necessarily from Petitioner’s underlying premises. The system configuration described by Petitioner just as easily could be accomplished by sending on/off commands to the various input and output components so that the desired input device is powered on and the non-desired input device is powered off. The same can be said of the output devices. Thus, the entertainment system, as a whole, can be configured by sending power on/off commands to various devices and then passively routing the input and output signals through the VCR. Petitioner cites to no explicit disclosure in Dubil where the VCR actively switches between a plurality of inputs and a plurality outputs. We have reviewed Dubil and find no such explicit disclosure. Neither do we find that Dubil discloses active switching of the VCR inherently. While it may be possible that the VCR could switch between sources and destinations, we are not persuaded that such functionality is necessarily present in Dubil for it to operate. Inherency may not be established by probabilities or possibilities. See Agilent Tech., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Id. Furthermore, Dubil cannot associate a remote control activity key command value with a configuration of the entertainment device unless Dubil first possesses a configuration of the entertainment device within the meaning of claim 13. We are not persuaded that Dubil discloses a “configuration of the entertainment device” as we have construed the term. Petitioner’s evidence and argument focuses on Dubil’s entertainment system as a whole. However, “configuration of the entertainment device,” as it is used in claim 13, refers to a set of executable instructions and data stored in memory in the entertainment device that is first downloaded from a personal computer and is then accessed and used after the entertainment device receives a signal from the remote control that contains a command value that is associated with such configuration. Petitioner provides no persuasive evidence that Dubil’s VCR has memory that stores executable instructions and data in the form of a “configuration of the entertainment device” that is downloaded from a computer and is accessed and used as claimed.” slip op. at 22
- BurdenNot shown unpatentable
“Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as Dubil fails to disclose all elements of claim 13, we find that Petitioner has failed to establish, by a preponderance of the evidence, that Dubil anticipates claim 13. slip op. at 26
Patent outcomesUS 8,243,207 not shown unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,243,207 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Dec 9, 2015 · IPR2014-00921 · APJ Josiah C Cocks · IPR · Final written decision
Claims 23, 24, 60, and 61 are unpatentable as obvious over Robertson and Ungerboeck; claims 23 and 60 were not shown anticipated by Palicot.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“It is clear from the record evidence before us that, in the context of the ’783 patent, a connection between two components is not one that is considered properly as “direct” if there is an interleaver between those components. We understand that an “interleaver” is a structure that provides extensive reordering of data. For instance, record evidence characterizes a particular interleaver as a “pseudorandom block scrambler” that reads out data “in a specified permuted order.” Ex. 1009, 29. Indeed, the ’783 patent itself characterizes an interleaver as a “pseudo-random block scrambler” that operates to output data “in a specified (fixed) random order.” Ex. 1001, 5:57–61. In that respect, it is further understood from the ’783 patent that there are extensive considerations that go into the design of interleavers and the effect that a given interleaver has on the configuration, order, and characteristics of data. See id. at 9:53–13:54. Thus, the operations of an interleaver appear to constitute complex data reordering schemes where the “pseudorandom” scrambling of data is, at least in some cases, the desired goal. As noted above, in the context of an inter partes review, the Board construes claim terms based on their broadest reasonable construction that is consistent with the underlying specification. Here, with that guidance in mind, we do not discern that Intellectual Ventures’s position that the claim terms in question should be construed narrowly to prohibit any intervening structure that performs any type of operation that may be regarded as manipulating data or changing the order of data in some aspect, regardless of the nature or extent of the data reordering. To that end, while the reordering operations provided by an interleaver are not encompassed by “directly” connecting elements, we are not satisfied that Intellectual Ventures has provided a suitable evidentiary basis for its position that any intervening data reordering, of any kind, is the benchmark for evaluating whether structures are directly connected to one another. It also is clear from the Specification of the ’783 patent, and as we observed in our Decision instituting trial (Inst. Dec. 12–13), that a direct connection does not prohibit some intervening structures, such as the intervening presence of a switch. In considering the totality of the record before us, we do not discern that there is cause to deviate from the construction we initially adopted for “directly coupled”/“signal directly from” as a part of the Decision to institute trial. Accordingly, for purposes of this Final Written Decision, we maintain the understanding that components that are “directly” coupled to one another, or which receive signals “directly” from one another, excludes the presence of an interleaver between those components, but does not prohibit any and all intervening structures, such as a switch.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Thus, the declarants are largely in agreement as to the level of ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“contends that Robertson discloses all the features of claims 23 and 60 (Pet. 49–54) with the exception of those features directed to “multilevel modulation” (id. at 53). In that regard, Ericsson contends that Robertson is directed to “binary modulation” rather than “multilevel modulation,” but points to Ungerboeck as disclosing multilevel modulation. Id. Referencing the declaration testimony of Mr. Mark Lanning (Ex. 1003), Ericsson contends the following: As noted by Mr. Lanning, it would have been obvious to one of ordinary skill in the art to combine Robertson and Ungerboeck to replace the binary modulation in Roberton’s coding system with multilevel modulation taught by Ungerboeck because it would yield the predictable result–that more data bits correspond to a modulated symbol, thereby enhancing bandwidth efficiency. Id. at 53–54. To that end, we understand that Ericsson proposes, and Mr. Lanning testifies (Ex. 1003 ¶ 230), that one of ordinary skill in the art would have had reason to substitute Ungerboeck’s multilevel 8-PSK modulator for Robertson’s binary modulator so as to enhance bandwidth efficiency.” slip op. at 18
- Expert testimonyPatent owner expert discountedDecided for patent owner
“ordinary skill in the art, but for a slight difference of opinion as to the extent of education. While Mr. Lanning and Dr. Xiong take the view that a person of ordinary skill “would have at least a Bachelors or Masters level college degree in Electrical Engineering, Computer Science, Computer Engineering or equivalent training and experience,” Dr. Cimini opines that only a Bachelor’s degree would be insufficient. Dr. Cimini advanced that opinion on the theory that one with only a Bachelor’s degree would lack an appropriate “mathematical foundation.” On the record before us, it is not apparent that the possession of a Master’s degree as compared with possession of a Bachelor’s degree establishes a dividing line between a person who is of ordinary skill in the art, and a person who is not. Dr. Cimini does not explain persuasively why a person with a Bachelor’s degree in the noted areas, coupled for instance, with the noted “academic or industry experience” would lack the requisite “mathematical foundation.” To that end, we are cognizant of the level of ordinary skill to which all declarants have testified, but do not understand the record as establishing that a Master’s degree, to the exclusion of other equivalent experience, is a strict requirement of a skilled artisan in the pertinent field.” slip op. at 16
Patent outcomesUS 6,023,783 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,023,783 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures I LLCSome claims unpatentablePTAB · Dec 9, 2015 · IPR2014-01149 · APJ William A Capp · IPR · Final written decision
Claims 18–22 and 43–44, 46–49 are unpatentable as obvious; claims 25–26, 55–59, and 62–63 were not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“The complete exclusion of Dr. Cimini’s testimony is not warranted or necessary here. Intellectual Ventures argues that the instant dispute concerning Dr. Cimini’s testimony should not affect the admissibility of his opinion, but merely the weight the Board accords his opinion. Paper 49, 12. This is the path we choose to follow. By shielding Dr. Cimini from the Robertson CMS reference so that he did not address it in his declaration and was unprepared to testify about it at this deposition, Intellectual Ventures deprived itself of an opportunity to respond to Ericsson’s case. Accordingly, we DENY Ericsson’s motion to exclude 60–65, 79, 80, and 93 of Dr. Cimini’s declaration testimony (Ex. 2009), but discount the weight to be given such testimony in light of the foregoing discussion.” slip op. at 9
- Adverse judgmentDenied
“Under 37 C.F.R. § 42.73, a party may obtain termination of a proceeding by requesting entry of adverse judgment. However, we do not interpret Ericsson’s request as a request for entry of adverse judgment. To the contrary, we view Ericsson’s motion as an effort to prevent entry of an adverse judgment under circumstances where Ericsson reserves the right to challenge the patentability of claims 55–59, in this or another forum. Finally, Ericsson relies on our extraordinary and discretionary powers under 37 C.F.R. § 42.5(a) as a basis for grant of the relief sought. In denying Ericsson’s previous motion to correct the petition, we considered whether it was an appropriate exercise of our extraordinary powers to allow Ericsson to correct its petition. Paper 31, 14–15. We concluded that it was not. Id. Many of the same considerations that informed our decision to deny Ericsson’s motion to correct its petition also militate against a grant of relief in the instant situation.” slip op. at 20
- BurdenFwd mixedNot shown unpatentable
“Ericsson concedes that the mistake in its Petition with respect to claims 55–59 is a “fatal flaw” and, consequently, it wants to remove those claims from the proceeding. Tr. 74:3–8, a copy/paste error that originated in Mr. Lanning’s Declaration resulted in a deficient analysis of independent claims 55 and its dependent claims 56–59 . . . [a]t this point in the trial, both Patent Owner and Petitioner agree that the Petition is defective with respect to claim 55–59. Paper 52, 5–6. In view of the foregoing, we find that Ericsson has failed to carry its burden of proof with respect to the unpatentability of independent claim 55 and claims 56–59 that depend therefrom.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“In our Decision to Institute, we construed “systematic convolutional encoder” on a preliminary basis, as an encoder that may output both encoded data and also original data (or its equivalent). In the Decision to Institute, we criticized Ericsson’s proposed construction because it focused on what it means for a coding system to be systematic to the exclusion of how the adjective “convolutional” also modifies the word “encoder.” DI 8–9. Similarly, we criticized Intellectual Ventures’s proposed construction because it focused on what it means for a coding system to be “convolutional,” to the exclusion of what it means to be “systematic.” Id. at 9. In the Decision to Institute, we admonished the parties to give 18 Claim 18 claims a “systematic recursive convolutional encoder.” Ex. 1001, 25:49. 19 Claim 43 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 29:57. 20 Claim 55 is a method claim that claims “systematic convolutional encoded intermediate output elements.” Ex. 1001, 30:61–62. 21 Claim 62 is a method claim that claims “systematic convolutional encoded output elements.” Ex. 1001, 31:60–61. attention to our points of criticism in their respective Patent Owner’s Response and Petitioner’s Reply. Id. We instituted a trial on less than all challenged claims. DI. In particular, we did not institute a trial on claim 6. DI 14. In its Patent Owner’s Response, Intellectual Ventures indicated that the Board need not construe this term to resolve the instituted grounds. PO Resp. 13. In its Petitioner’s Reply, Ericsson simply states that it agrees with the Board’s claim construction in the Decision to Institute. Reply 6. The parties’ respective positions, as developed in Intellectual Ventures’s Patent Owner’s Response and Ericsson’s Reply do not rely on competing constructions of this term. Accordingly, we do not modify the construction of this term as set forth in our Decision to Institute. 2. “coded output elements” - “encoded output elements” (Claims 18, 19,” slip op. at 24
Patent outcomesUS 6,023,783 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,023,783 - Google Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 7, 2015 · IPR2014-01031 · APJ William A Capp · IPR · Final written decision
Claims 1–8 and 21–27 are unpatentable: claims 1–6, 8, and 21–26 are anticipated by Pierzga, and the remaining claims are obvious over the stated combinations.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Rule 901 of the Federal Rules of Evidence provides that the requirement of admissibility is satisfied by evidence sufficient to support a finding that the material in question is what its proponent claims. The burden of proof for authentication is “slight.” Lexington Ins. Co. v. W. Penn. Hosp, 423 F.3d 318, 329 (3d Cir. 2005). Rule 901(b) lists nine examples of authentication techniques, the list of examples is not intended to be exclusive. United States v. Simpson, 152 F.3d 1241, 1249–50 (10th Cir. 1998). Rule 901(a) merely prescribes that a proponent produce sufficient evidence of authenticity to support a prima facie case that the item is genuine. Rickets v. City of Hartford, 74 F.3d 1397, 1409–11 (2d Cir. 1996). Courts maintain that a bona fide dispute as to the authenticity of evidence generally should be decided by the trier of fact. See id. Conflicting evidence of authenticity goes to weight, not admissibility, as long as some reasonable person could believe that the item is what it is claimed to be. Id. at 1411. In light of Dr. Madisetti’s testimony based on his personal experience and observation of the author/publisher and the reliability of the dates of publication that appear on the face of its publications, we find that Google has a laid a sufficient foundation for admission of Exhibit 1003 over Intellectual Ventures’s objection. Exhibit 1003 is not hearsay as it is not offered for its truth, but merely for what it states. We DENY Intellectual Ventures’s motion to exclude Exhibit 1003 and Exhibit 1019.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“alternative depending on the context of its use. Pet. 13–14 (“Skilled persons would . . . understand that either of these definitions applies”). Google further argues that the ’353 patent uses “bandwidth” as synonymous with data rate. Id. Google’s position that the ’353 patent uses bandwidth as synonymous with data rate is contradicted by the prosecution history evidence discussed above where the claims were amended essentially to substitute “bandwidth” for “chip rate” to distinguish over Boer’s disclosure of variable data rates. Thus, the intrinsic record supports a meaning of “bandwidth” that more closely conforms to definition number 1 above. We agree with Intellectual Ventures that, in the context of the ’353 patent, “bandwidth” does not mean “data rate” or “data transfer rate.” In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz. 2. indication of operating bandwidth (claims 1, 21)” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“A person of ordinary skill in the art reading the Specification of the ’353 patent, as a whole, would understand that the “operating bandwidth” of claims 1 and 21 is the frequency range or bandwidth that is used for the transport channel. The person of ordinary skill in the art would also understand that the operating bandwidth is coordinated between the transmitter and the receiver using logic and filtering so that the frequency range that the transmitter uses to transmit the data portion of the signal is compatible with the frequency range that the receiver uses to receive the data. See Ex. 1001, claims 21, 22. In other words, the system operates at a range of frequencies, i.e., the “operating bandwidth,” that enables the receiver to receive what the transmitter has transmitted. Intellectual Ventures’s proposed construction merely substitutes the word “identification” in lieu of “indication” and then inserts the word “particular” as a modifier to “operating bandwidth.” Substituting “identification” for “indication” does nothing to clarify the meaning of this phrase. Furthermore, we do not agree with Intellectual Ventures that interjection of the word “particular” into the construction contributes anything meaningful to an understanding of the term. Thus, for purposes of this Decision, it is sufficient to construe “indication of an operating bandwidth” to mean that the first signal portion contains sufficient information so that when it is received, the receiver is able to configure itself to receive the data portion of the signal (or “further signal portion” or “transport channel”) at approximately the same frequency range or bandwidth at which it will be transmitted by the transmitter.11 11 In further regard to Intellectual Ventures’s contention that the bandwidth indication must be “particular,” we express no opinion as to whether the receiver must be set to the exact same lower cut-off frequency and upper cut-off frequency as the transmitter as a slightly narrower or broader transmitter or receiver bandwidth may still be adequate to transmit and receive the information contained in the signal and thus function as an “operating bandwidth.” The key consideration is that the receiver is able to receive the data that the transmitter transmits.” slip op. at 22
Patent outcomesUS 7,848,353 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,848,353 - Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Dec 7, 2015 · IPR2014-00915 · APJ William A Capp · IPR · Final written decision
Claims 6–10 and 28–32 are unpatentable as obvious over the specified combinations based on McFarland and over the specified combinations based on Trompower.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“We think Exhibit 1012 is probative of whether Trompower is analogous art to the ’079 patent and will admit it for this limited purpose. We DENY Intellectual Ventures’ motion to exclude Exhibit 1012.” slip op. at 7
- Skill levelSkill level board ownOther
“Neither party presents a detailed evidentiary showing under the factors recited in Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696– 97 (Fed. Cir. 1983).24 Notwithstanding the scant evidence on skill level presented by the parties, the level of skill in the art often can be determined from a review of the prior art. See Litton Indus. Products, Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our review of the prior art, the applicable field of endeavor is wireless telecommunication. The person of ordinary skill in this field would have been generally familiar with transmitting information using packets that included a header portion and a data portion. Ex. 1002, 6:64– 24 Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. See id. These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). 7:3. The person of ordinary skill in the art would have been familiar with techniques for varying the signal rate and the occupied bandwidth of a signal on a packet-by-packet basis. Id. at 7:4–15. The ordinarily skilled artisan also would have been familiar with the fundamentals of OFDM communications technology. Id. 1:18–2:61. Such fundamentals of OFDM communications would have included synchronizing the timing and frequency of OFDM signals. Ex. 1003, 7:1–8, 9:1–23. The skilled artisan also would have been familiar with the basic principles underlying spread spectrum communication technology. Ex. 1007, Abstract. Such an artisan would have been familiar with modulating carrier waves, varying the modulation scheme used in different packet/signals, and synchronizing the modulation scheme between a transmitter and a receiver. Ex. 1004, 2:14– 19; 10:48–11:3. The person of ordinary skill in the art would also have familiarity with using Node-Bs in a UMTS environment. Ex. 1005; Ex. 1006.” slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We think that Ericsson’s position is correct. Trompower discloses that: “for a given communication . . . the mobile terminal and the base station can adjust the PN code length and the chipping rate.” Ex. 1007, 5:42–44 (emphasis added); Ex. 1015 ¶ 49. Dr. Haas’s testimony at paragraphs 49–54 of his declaration is corroborated by statements in Trompower that the system can increase or decrease its spectral bandwidth depending on conditions. Ex. 1007, 6:27–39. 26 This change in spectral bandwidth is accomplished in connection with information that is gleaned from the header of a packet: The demodulator 814 demodulates the PN coded signal from the carrier frequency and forwards the PN coded signal to the filter 816. Prior to receiving the PN coded signal, the filter 816 receives the PN code chipping rate value signal from the microprocessor 730 and adjusts its spectral bandwidth based on the PN code chipping rate value received. Ex. 1007, 33:39–45. Thus, we agree with Ericsson that there is no material difference between the prior art and claimed invention with the respect to the “indication of an operating bandwidth” limitation in claims 6 and 28. 2. Claims 7, 10, and 29” slip op. at 54
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“As modern telecommunications technology has developed over time, the term “bandwidth” has acquired more than one meaning. For example, one on-line dictionary provides the following two definitions: 1: a range within a band of wavelengths, frequencies, or energies; especially: a range of radio frequencies which is occupied by a modulated carrier wave, which is assigned to a service, or over which a device can operate. 2: the capacity for data transfer of an electronic communications system (graphics consume more bandwidth than text does); especially: the maximum data transfer rate of such a system (a bandwidth of 56 kilobits per second). www.merriam-webster.com/dictionary/bandwidth (last visited October 16, 2015). The parties’ proposed constructions appear to agree that the term “bandwidth,” as used in the claims of the ’079 patent, more closely conforms to definition number 1 above. Such a construction is supported by the prosecution history of the ’353 patent where the claims were amended essentially to substitute “bandwidth” or “bandwidth determined by . . . chip rate” for “chip rate” to distinguish over the Boer reference. In view of the foregoing, we retain the same construction for “bandwidth” that we adopted for purposes of the Decision to Institute. Thus, for purposes of this Final Written Decision, we construe “bandwidth” to mean “a frequency range.” For purposes of clarification, we will provide the following example: a band of frequencies with a lower cut-off frequency of 10 MHz and an upper cut-off frequency of 40 MHz has a “bandwidth” of 30 MHz.” slip op. at 17
Patent outcomesUS 8,396,079 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,396,079 - Legacy Separators, LLC v. Halliburton Energy Services, Inc.Institution deniedPTAB · Dec 4, 2015 · IPR2015-01526 · APJ James J Mayberry · IPR · Institution
The Board denied institution on all challenged claims 1–17 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below upon considering the Petition and the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Legacy will prevail in challenging any of claims 1–17 of the ’215 patent. We do not authorize an inter partes review to be instituted as to any challenged claim.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“and second chambers, for restricting fluid flow to generate a pressure drop in said production fluid and to separate gas and liquid as said production fluid enters said second chamber.” Ex. 1001, 4:61–66. Legacy recognizes that this claim limitation invokes the requirements of 35 U.S.C. § 112, paragraph 6, and we agree.2 See Pet. 20. Accordingly, we construe this limitation by 2 Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated § 112(f) when § 4(c) of the America Invents Act (ALA), Pub.L. No. 112–29, took effect on September 16, 2012. Because the application resulting in the determining the claimed function and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Lee ’193 discloses the recited means of claim 1. First, Legacy fails to support its contention that diffuser 42 necessarily restricts flow because it increases pressure in the production fluid. Indeed, a diffuser operates in the exact opposite manner—it increases the cross-sectional flow area that a fluid passes through, which causes the fluid to decrease in velocity and increase in pressure. Further, Legacy’s general citation to Dr. Wooley’s declaration fails to lend support to its position. We are directed to nothing in Dr. Wooley’s declaration, other than a conclusory statement that Lee ’193 anticipates claim 1, to lend support to the position that the disclosure that diffuser 42 increases fluid pressure necessarily means that diffuser 42 restricts fluid flow. Accordingly, we find that Lee ’193’s disclosure that fluid pressure increases as it passes through diffuser 42 does not support a finding that diffuser 42 necessarily restricts fluid flow. More significantly, the means-plus-function recitation of claim 1 requires that the corresponding means restrict fluid flow to generate a pressure drop in the production fluid—that is, a consequence of the restricted flow is to generate a pressure drop in the fluid. As Legacy recognizes, diffuser 42 causes an increase in the fluid pressure, not a drop in the fluid pressure as the production fluid passes through the diffuser. See Pet. 27; see also Prelim. Resp. 20 (“On the contrary, . . . the diffuser in Lee ’193 increases the pressure of the fluid.”). Legacy’s argument that diffuser 42 functions to generate a pressure drop in the production fluid is equally unavailing. As an initial matter, Legacy’s position contradicts its position that diffuser 42 increases the pressure in the production fluid. Legacy fails to adequately explain how diffuser 42 can act to both increase pressure in the production fluid and cause a pressure drop “across diffuser 42.” See Pet. 27. Legacy attempts to avoid this contradiction by asserting that “[t]he increased pressure of the production fluid leaving the diffuser 42, in comparison to the reduced pressure in the vented separation chamber, generates a pressure drop in the production fluid entering the separation chamber.” Id. at 29–30 (emphasis added). That is, Legacy argues that the pressure drop function is achieved because the pressure of the production fluid as it leaves diffuser 42 is greater than the pressure in the fluid within the separator section housing centrifuge 44. However, as argued by Legacy, this pressure profile would result in a pressure drop in the fluid across the second chamber, not across diffuser 42. Significantly, the means of claim 1 must function to restrict fluid flow to generate a pressure drop in the production fluid—that is, the generated pressure drop results from restricting the flow in the means.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above in connection with our analysis of claim 1 as anticipated by Lee ’193, Legacy fails to persuade us that Lee ’193 anticipates claim 1—specifically, Legacy fails to persuade us that Lee ’193 includes the recited means-plus function limitation of claim 1. Further, Legacy fails to explain how Carle remedies this deficiency. Accordingly, on the record before us, we conclude that Legacy has failed to show a reasonable likelihood of prevailing in its assertion that claim 5 is unpatentable over Lee ’193 and Carle under Ground 2.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,761,215 - Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing deniedPTAB · Nov 12, 2015 · IPR2014-00304 · APJ James B Arpin · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its final decision that claims 24 and 25 are unpatentable as obvious over Gass.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“selected sequence of fastening” from claim 24 during prosecution necessarily alters the construction of additional terms in the claims. Reh’g Req. 3–6 (discussing “fastening location,” “predetermined sequence,” “fastening monitor,” and “sequence output”). With respect to these claim interpretation arguments, however, Patent Owner again fails to identify where each of these arguments was raised previously.1 Moreover, with respect to the effect of any such disavowal on the interpretation of other claim terms, we could not have misapprehended or overlooked arguments that Patent Owner did not raise previously. Even if we addressed this new argument, as Patent Owner urges we must under Microsoft Corp. v. Proxyconn, Inc., it fails. Patent Owner asserts that its clear disavowal may be drawn from a comparison of claim 1 with claims 7 and 11 and the addition of claim 46, which became challenged claim 24, “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of the claim as 1 New arguments may not be raised at an oral hearing. Patent Owner’s challenge during the oral hearing to Petitioner’s allegedly late submission of a dictionary definition of “location” does not make these arguments part of the record. Reh’g Req. 3–4 (citing Tr. 43:6–18). Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013). Patent Owner also argues that governing case law requires that we consider the prosecution history. Patent Owner notes that, in Microsoft Corp. v. Proxyconn, Inc., the Federal Circuit observed that the Board “should also consult the patent's prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Nos. 2014-1542, 2014-1543, 2015 WL3747257 at *3 (Fed. Cir. Jun. 16, 2015). In this regard, Patent Owner argues that we are bound by the Examiner’s claim construction resulting from Applicants’ disavowal of scope during prosecution. Reh’g Req. 7–8 (citing Tr. 55:17–18); see Tr. 55:13–24. As the prosecution history makes clear, Patent Owner proffered a new claim 46 during prosecution “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening,” but not in response to any Examiner request (Ex. 1006, 17) unlike the situation in Tempo Lighting, Inc. v. Tivoli, LLC. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Thus, we are not persuaded that Patent Owner has identified a claim construction resulting from the prosecution history that constitutes a “deal” between Applicants and the Examiner, binding on this panel. See Reh’g Req. 3 (“A deal was made to secure allowance of the claims by specifically amending them to only read on the ‘predetermined sequence program’ embodiment of the specification that requires a predetermined sequence of fastening among locations 52a–52c.”; emphasis added). Even if we were to accept Patent Owner’s arguments that a clear disavowal of claim scope exists in the prosecution history of the ’573 patent, as the Federal Circuit observed, in such a situation, “the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, 742 F.3d at 978. Therefore, we are not persuaded that our consideration of the prosecution history was contrary to governing precedent, as argued by Patent Owner, such that it amounted to an abuse of discretion.” slip op. at 5
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2032, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 38, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point. Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 7
Claim constructionPatents in suitUS 6,763,573 - Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing deniedPTAB · Nov 12, 2015 · IPR2014-00305 · APJ James B Arpin · IPR · Rehearing
The Board denied Patent Owner’s rehearing request and left in place its final decision that claims 22–28 were unpatentable under § 103(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“claims 7 and 11 and the addition of claim 46, which became challenged claim 24 of the parent patent to the ’831 patent, Patent No. US 6,763,573 B2 (Ex. 1001, “the ’573 patent”), “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of claim 22 of the ’831 patent, as Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2033, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 39, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point. Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the broadest reasonable interpretation of “fastening location” is not limited to a single opening, but may encompass a position or site where fastening occurs when assigned its ordinary meaning. See Ex. 1041, 3. Having to make such a distinction between a single opening and a fastening site with more than one opening is negated, however, by the open transitional phrase, [“comprising,”] in claim 22. Because claim 22 uses the open transitional phrase “comprising,” additional fastening operations between the first and second fastening operations are not excluded, as long as the predetermined sequence between the first and second locations is maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well understood to mean ‘including but not limited to.’”); Ex. 1001, 12:13–16 (contemplating a “plurality” of fastening locations, but [“at least”] first and second fastening locations). Final Dec. 8 (emphasis added). This interpretation does not change the order of the recited operations, but acknowledges that other operations may be encompassed within the scope of the challenged claims. Thus, we have not abused our discretion by misapplying governing precedent. In addition, Patent Owner fails to identify where it made these arguments previously in its Patent Owner Response. Because Patent Owner has not raised these arguments in its Patent Owner Response, we could not have misapprehended or overlooked an argument that Patent Owner did not raise previously.” slip op. at 9
Claim constructionPatents in suitUS 7,062,831 - Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentablePTAB · Nov 3, 2015 · IPR2014-00828 · APJ Joni Y Chang · IPR · Final written decision
Claims 30–37, 39, and 40 are unpatentable under § 103(a) over Iwamura, Angelbeck, and Pinsley, with Wells or Lovelock added for specified dependent claims.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1223, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1201, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1223, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9
- Skill levelOther
“teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding that Dr. Hartsough provides a definition of “a person of ordinary skill in the 10 art” in the context of the ’779 patent,5 we are mindful that the level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the evidence in this record, we credit Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) that magnets, such as those disclosed in Pinsley and Angelbeck, generate a magnetic field that substantially traps electrons in a plasma apparatus. Notably, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generate a magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Dr. Hartsough acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Both Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) and Dr. Hartsough’s cross-examination testimony (Ex. 1223, 123:4–13) are consistent with the prior art of record, including the Admitted Prior Art, which recognizes a magnetic field is strongest at the poles of the magnet and weakest in the region at the center between the poles (Ex. 1201, 3:12–13). As discussed above, the prior art of record clearly shows that it was well-known in the art at the time of the invention to use magnets in a plasma apparatus for trapping electrons. Based on the prior art of record, we agree with Dr. Kortshagen that “the use of magnets and their corresponding magnetic fields to trap electrons . . . was already known in the prior art,” at the time of the invention. See Ex. 1221 ¶ 37.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 47–49, 52, 54–55. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1205, 2:43–48; Ex. 1206, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground 30 state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1202 ¶¶ 120, 140–41. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. X-ray radiation” slip op. at 30
Patent outcomesUS 6,805,779 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,805,779
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.