• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentable
  PTAB · Dec 8, 2023 · IPR2022-01022 · APJ John D Hamann · IPR · Final written decision

  Claims 15 and 18 are unpatentable as obvious over KR872; substitute claims 26 and 27 are unpatentable, and the contingent motion to amend is denied.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34

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

    “Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34

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

    “Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “Motion for Additional Discovery seeking information via an interrogatory to Patent Owner relating to indicia of non-obviousness. Paper 26.2 Patent Owner filed an Opposition to this motion. Paper 27. We granted Petitioner’s Motion for Additional Discovery, and ordered Patent Owner to respond to the interrogatory. Paper 57,3 12. Patent Owner filed its verified interrogatory response as Exhibit 2041. We also authorized the parties to file papers concerning the significance of the produced information. Paper 57, 12. Petitioner filed an Explanation of the Significance of Patent Owner’s” slip op. at 3

  Patent outcomesUS 8,514,499 unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,514,499
• Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentable
  PTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33

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

    “We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30

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

    “The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15

  Patent outcomesUS 9,892,637 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,892,637
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2022-00680 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

  • Skill levelOther

    “E. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art” slip op. at 13

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

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  Patent outcomesUS 6,907,305 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,907,305
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01344 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

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

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

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

    “the “software scheduling agent” broadly as being “capable of reactively scheduling appointments for activities in the process flow responsive to an automatic detection and notification of a plurality of predetermined events.” Ex. 1001, 32:7−11; Ex. 1001, 43:48−50, 44:54−58 (claim 44 of the ’305 patent recites similar language except it requires scheduling appointments for processing the work pieces through the process stations, instead of for activities in the process flow). Again, this language is agnostic as to which manufacturing domain entity the software scheduling agent is monitoring and scheduling for. For instance, an MSA receives any changes that occur to a particular machine. Ex. 1001, 7:61−62. If the availability of the machine changes, the MSA subscribed to monitor for notifications from that specific machine receives an alert and reacts appropriately. Id. at 7:62−67. Likewise, the change of an appointment for processing a lot causes a notification for the corresponding lot scheduling agent, which will then change its calendar accordingly. Id. at 9:51−59. Regardless of whether it is a machine or a lot, the claimed software scheduling agent is notified of an event, and then reactively schedules an appointment for a corresponding manufacturing entity domain in response to the event. It is therefore” slip op. at 29

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

  Patent outcomesUS 6,907,305 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,907,305
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01342 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  • Strike new argumentNew argument disregardedNew argument consideredGranted in part

    “Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98

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

    “A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15

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

    “monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57

  Patent outcomesUS 6,968,248 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,968,248
• Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentable
  PTAB · Feb 7, 2023 · IPR2021-01339 · APJ David Cotta · IPR · Final written decision

  Claims 1–16, 18–26, and 28–31 are unpatentable: claims 1, 2, 6, 9–13, 18, 19, 21–23, 28, and 29 are anticipated by Brcka; the remaining challenged claims are obvious over Brcka.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is generally consistent with the level of skill reflected in the specification and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) 6 Patent Owner does not present objective indicia of nonobviousness in this case. See generally, PO Resp. 9 (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). And we agree with Patent Owner that “additional education can compensate for less work experience and vice versa.” Accordingly, we adopt Petitioner’s proposed definition of the POSA level with the additional clarification proposed by Patent Owner.” slip op. at 9

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

    “Petitioner does not identify any claim terms that require construction. Pet. 18. Patent Owner does not dispute Petitioner’s assertion that no claim terms require construction. PO Resp. 16–17. We do not find it necessary to construe the claims in order to resolve this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “The implicit premise of Patent Owner’s argument is that Brcka discloses only failures and thus does not disclose “fault detection.” However, we credit the testimony of Dr. Shanfield that “[g]enerally you always need a fault to have a failure occur. So when there is a failure, a fault has occurred.” Ex. 2003, 74:6–11; see also Ex. 1003 ¶ 37 (“A fault is an abnormal tool condition, such as when a parameter strays beyond its acceptable boundary. Faults may lead to failure, which is the ‘termination of the ability of an item to perform a required function.’”) (internal citation omitted), 81 (“Machine failure, though, means that a fault condition existed requiring termination of the machine function upon the wafer.”). Thus, Brcka’s disclosure of analyzing machine failures is also, necessarily, a disclosure of a analyzing a fault. Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Brcka discloses “performing in a computer a fault detection analysis relating to processing of a workpiece.”” slip op. at 20

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

    “Petitioner cites to the embodiment depicted in Brcka’s Figure 4 as illustrating Brcka’s “fault detection analysis.” Pet. 32–33; see also Ex. 1003 ¶¶ 72–73. Figure 4 is a “flow diagram demonstrating operation of a learning system and [a] neural network model designed in accordance with at least one embodiment of [Brcka’s] invention.” Ex. 1005 ¶ 44. In step 415 of the operation disclosed in Figure 4, “a determination is made whether maintenance has been performed or a machine failure has occurred.” Id. ¶ 44, Fig. 4. If either of these things has happened, “a new reward value is calculated.” Id. In step 440, “a determination is made whether maintenance is needed.” Id. ¶ 45, Fig. 4. Thus, Brcka determines whether a failure has occurred, accounts for this determination by assigning a “reward value” (Fig. 4, step 425), and then decides whether maintenance is needed. On this record, the analysis reflected in these steps qualifies as a “fault detection analysis.” We recognize that Brcka’s fault detection analysis is used in a method that includes a predictive component. But, we do not find anything in the language of claim 1 that precludes performing the fault detection analysis as part of a predictive model. Indeed, the claim language requires only “performing . . . a fault detection analysis.” Moreover, the “fault detection” itself (i.e., Brcka’s step 415), as opposed to the analysis of the detected fault, is backward-looking, not predictive; it determines “whether . . . a machine failure has occurred.” Id. ¶ 44 (emphasis added).” slip op. at 16

  Patent outcomesUS 8,676,538 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,676,538
• Lifescan Global Corporation v. Ikeda Food Research, Ltd., And PHC CorporationOther
  PTAB · Aug 12, 2020 · PGR2019-00032 · APJ David Cotta · PGR · Final written decision

  The Board granted cancellation of claim 8 and denied entry of substitute claim 11 because Petitioner showed it would have been obvious over Omura, Tsuji, and the knowledge of a person of ordinary skill.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Institution Decision, we agreed with the position Patent Owners took in their Preliminary Response – i.e, that the focus of the challenged claims was enzyme-based biosensors and thus the POSA would have more than just a familiarity with enzyme-based biosensors and protein chemistry. Inst. Dec. 8–9. Accordingly, based on the record before us at the time, we accepted the definition provided in Patent Owners’ Preliminary Response, which was consistent with the level of skill reflected in the asserted prior art references and in the specification of the ‘987 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). Neither party challenges the identification of the POSA set forth in our Institution Decision. See generally, R. Mot.; Opp.; Reply; Sur-reply. Additionally, we find that the fully developed trial record supports the POSA identification we made in our Institution Decision. Accordingly, in this decision, we apply the identification of the POSA set forth in our Institution Decision. Inst. Dec. 9.” slip op. at 9

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

    “Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this decision, we need not expressly construe any claim terms.” slip op. at 10

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “first, substitute claim 11 would have been obvious over Omura in view of the knowledge of the POSA, and second, substitute claim 11 would have been obvious over the combination of Omura and Tsuji in view of the knowledge of the POSA. Opp. 7–24. We have considered the question of patentability in view of all the evidence and arguments presented in this proceeding. Based on the record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA. Because Petitioner has proven that substitute claim 11 would have been obvious, as discussed in detail below, we do not consider whether Patent Owners’ motion otherwise complies with the statutory and regulatory requirements for a motion to amend. See, 35 U.S.C. § 326(d)(1)(B) (requiring that the amendment propose a “reasonable number of substitute claims” and requiring that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter”); 37 C.F.R. § 42.221 (additionally providing, inter alia, that a motion to amend “may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial”). Similarly, because we have determined that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA, as discussed in detail below, we do not reach the question of whether substitute claim 11 would also have been obvious over only Omura in view of knowledge of the POSA.” slip op. at 11

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

    “includes “research experience and/or knowledge in enzymology . . . and biosensors,” we agree with Petitioner that it would have been obvious to a POSA to substitute FAD-conjugated glucose dehydrogenase derived from the claimed strain of Aspergillus oryzae for FAD-conjugated glucose dehydrogenase derived from Aspergillus terreus as disclosed in Omura.” slip op. at 18

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,976,125

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.