- Tokyo Electron Limited v. Daniel L. FlammInstitution deniedPTAB · Oct 4, 2017 · IPR2017-01072 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 13–26, 64, and 65 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in the Petition and Preliminary Response, we conclude that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of claims 13–26, 64, and 65. Accordingly, we do not institute an inter partes review on those claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Thus, the ordinary meaning of the claim language itself requires predetermining the temperature change (i.e., the change from the selected first substrate holder temperature to the selected second substrate holder temperature) within a specific interval of time (i.e., the time for changing from the selected first substrate holder temperature to the selected second substrate holder temperature), and based on that predetermination, selecting the thermal mass of the substrate holder. A construction that does not require selecting a thermal mass for a particular temperature change and a specified interval of time, as opposed to selecting a thermal mass that can facilitate or allow a temperature change, is not consistent with the plain and ordinary meaning of the claim. We recognize that the thermal mass of a substrate holder is not the only factor that controls the rate of temperature change of the substrate holder. See, e.g., Ex. 1001, 16:60–67 (stating that the “heat exchanger, fluid flow rate, coolant-side fluid temperature, heater power, chuck, etc. should be designed to bring the fluid to a setpoint temperature and bring the temperature of the chuck and wafer to predetermined temperatures within specified time intervals and within specified uniformity limits”). The plain language of the claim, however, still requires that the thermal mass of the substrate holder be selected for a predetermined temperature change within the specific interval of time.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“We do not construe these limitations as requiring the involvement of a heat transfer fluid. “Heat transfer fluid” is not recited in the claims. Although the claims are interpreted in light of the specification, it is improper to read limitations from the specification into the claims. See, e.g., In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (“It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words.”). As such, we are not persuaded that that the phrases “substrate holder,” “heat transfer device,” and “selected thermal mass,” as recited in claim 13, should be construed as requiring the involvement of “heat transfer fluid.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“3. Remaining Claim Terms For purposes of this Decision, based on the record before us, we determine that none of the remaining claim terms require an explicit construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham - PTAB · Aug 17, 2017 · IPR2017-00662 · APJ Christopher M Kaiser · IPR · Rehearing
The Board denied Harvard’s rehearing request, leaving institution in place on anticipation by Buchanan and obviousness over Buchanan and the knowledge of an ordinarily skilled artisan for claims 24, 26, and 29.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We will grant a request for rehearing of a petition decision if the requesting party demonstrates “an abuse of discretion” in the decision. 37 C.F.R. § 42.71(c). That party must also “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” Id. § 42.71(d). After considering Patent Owner’s request for rehearing, our decision, and the evidence currently of record, we determine Patent Owner has not demonstrated an abuse of discretion. Accordingly, we deny the request for rehearing.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We are not persuaded that, based on the current record, we have misinterpreted Buchanan’s disclosure. First, Buchanan’s Example 3 does not state, as Patent Owner argues, “that the inventive method can be expanded from forming a multicomponent metal oxide as specifically described in Example 3, to forming a single metal oxide by ‘utilizing one precursor source mixture which contains only one precursor.’” Request 5. Patent Owner leaves out a portion of the statement, which says that the method “can be expanded to include growth of any single component metal, metal oxide, metal nitride or metal silicide film.” Ex. 1005, 20:63–67 (emphasis added). If the statement were to be limited to the use of one of the two precursors discussed in Example 3, it would mean that the method could be expanded only to deposit films containing either zirconium or hafnium, not to films based on “any . . . metal.” It may be that the evidence adduced at trial will show that “any . . . metal” should be interpreted as limited to zirconium and hafnium, but it is not apparent from the present record why this should be the case. If our conclusion on this record that Example 3 can be expanded to include the deposition of films based on any metal is correct, however, then it follows that the use of precursors other than zirconium nitrate and hafnium tertbutoxide is contemplated.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“tetrakis(dimethylamino) hafnium, and tetrakis(diethylamino) hafnium in particular would have been selected as better in Buchanan’s Example 3 than any of the other compounds disclosed by Buchanan.” Request 13–15. As discussed above, we are persuaded that Petitioner has shown sufficiently for purposes of instituting review that, at least on the present record, Buchanan discloses using any of its suitable precursors in the method of its Example 3. Given this, Petitioner was not required to show that these particular compounds “would have been selected as better . . . than any of the other compounds disclosed by Buchanan” in order for us to conclude that Petitioner had shown a reasonable likelihood of succeeding in demonstrating the obviousness of claims 24, 26, and 29 over the combination of Buchanan and the knowledge of a person of ordinary skill in the art. The law does not require that the use of the claimed compound be “better . . . than [the use of] any of the other disclosed compounds,” because “[a] finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed . . . is the preferred, or most desirable, combination.” Bayer Healthcare Pharms., Inc. v. Watson Pharms., Inc., 713 F.3d 1369, 1376 (Fed. Cir. 2013) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Instead, it requires only that the person of ordinary skill in the art would have had a reason to combine the teachings of the prior art. Here, to support its obviousness ground, Petitioner will need to show at trial that a person of ordinary skill in the art would have had a reason to combine Buchanan’s teaching in Example 3 of a particular ALD process with Buchanan’s teaching that “tetrakis(dimethylamino), [and] tetrakis (diethylamino) Ti, Zr, Hf, Si, Ge, Sn, or Pb” were suitable precursors for use in an ALD process. In our Institution Decision, we were persuaded that, given Buchanan’s disclosure of using any suitable precursor in the process of Example 3, Buchanan’s disclosure that any of its precursors were suitable for use in any ALD process, and the description of these particular precursors as “preferred” and “highly preferred,” Petitioner had demonstrated a reasonable likelihood that it would succeed in making this showing at trial. We are not persuaded by Patent Owner’s argument that we abused our discretion in coming to this conclusion.” slip op. at 15
- Expert testimonyPetitioner expert creditedDecided for patent owner
“Banerjee, testified “that a person of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Buchanan’s Example 3.” Paper 11, 9 (quoting Ex. 1003 ¶ 134). Although we noted that this testimony was disputed by Patent Owner’s declarant, Dr. Gladfelter, we were required to resolve the factual dispute in the light most favorable to Petitioner for purposes of the Institution Decision. Id. (citing 37 C.F.R. § 42.108(c); Ex. 2101 ¶ 127). Patent Owner now argues that Dr. Banerjee’s testimony is entitled to no weight because it “is in the form of conclusory statements and fails to adequately explain why one of ordinary skill ‘would have at once envisaged’ the use of Buchanan’s named precursors in Example 3.” Request 10–11. Patent Owner cites to page 21 of its Preliminary Response as the place where it raised this argument previously. Id. at 10. Patent Owner did not previously raise the argument that Dr. Banerjee’s testimony is entitled to no weight, either on page 21, or on any other page, of its Preliminary Response. Under our rules, a party requesting rehearing must “specifically identify . . . the place where each matter [that we misapprehended or overlooked] was previously addressed.” 37 C.F.R. § 42.71(d). Accordingly, we will not grant Patent Owner’s request for rehearing on this basis. Moreover, we note that Dr. Banerjee’s testimony cites to Buchanan’s statement that “[t]he precursor source mixture of the present invention can be used in any CVD or ALD process with any delivery means currently employed” as the reason that a person of ordinary skill in the art “would have at once envisaged that the other precursors are applicable to Example 3.” Ex. 1003 ¶ 134 (quoting Ex. 1005, 7:30–34). We need not determine at this point whether this reasoning is sufficient, in light of Dr. Gladfelter’s testimony to the contrary, to establish as a factual matter that a person of ordinary skill in the art actually “would have at once envisaged that the other precursors are applicable to Example 3,” which is an issue to be determined at trial. We do note, however, that, contrary to Patent Owner’s argument, Dr. Banerjee does offer at least some explanation for his opinion.” slip op. at 11
§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,969,539 - Fitbit, Inc. v. Aliphcom, Inc. D/B/A JawboneAll claims unpatentablePTAB · Aug 15, 2017 · IPR2016-00607 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 16–19, 23, and 26 are unpatentable as anticipated by Lo; claims 20–22, 24, and 25 are unpatentable as obvious over the specified combinations.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The broadest reasonable interpretation standard is intended to address just such situations, to encourage patentees to resolve ambiguities in claim language and encourage precision in claim drafting. See Cuozzo, 136 S. Ct. at 2145 (“use of the broadest reasonable construction standard . . . encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims.”). Therefore, when faced with a claim term which has multiple reasonable interpretations in light of the specification, we must choose the broadest that is still reasonable. Here, that is the interpretation that encompasses a molding formed substantially across a side of the inner molding. We note, however, that we do not read the term as broadly as Fitbit implies, such that “substantially” would permit a small amount of coverage of that single side. We agree with Jawbone that this term of degree was intended to capture insubstantial differences in coverage, such as that depicted in Figure 9 (wherein the outer molding does not cover plug 904 and button 906). Accordingly, an outer molding that is formed substantially across a single side of an inner molding, would “cover all or 7 In our Decision on Institution, we phrased this interpretation as “on top of,” but did not intend to introduce a directional component (such as “above”) to the claim term that is unsupported by the ’811 patent. As Dr. Young understood, “the ‘top’ of the inner molding is the surface of the inner molding, not just the side that happens to point up as the ‘top’ when viewed in a cross-sectional image.” Ex. 2001 ¶ 47. To remove any potential confusion, we have rephrased the interpretation as “across a side of.” substantially all” of that inner molding within the broadest reasonable interpretation in light of the ’811 patent specification.” slip op. at 22
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“The problem with Dr. Young’s testimony—and, in turn, Jawbone’s position—is that it rests on a flawed premise. Contrary to Dr. Young’s statements, the ’811 patent does not state conclusively that the purpose of the outer molding recited in claim 16 is protection of the inner molding. The specification states that the outer molding “may also be configured to completely enclose or encase an underlying item in order to protect the inner molding, the protective layer, and any elements from damage.” Ex. 1001, 7:29–32 (emphasis added). But the specification also states that the outer molding may be used to provide “surface ornamentation” to an object. Id. at 6:6–8. Furthermore, the specification acknowledges that “protective” is used in two contexts in the patent: providing protection to the structure to which it is applied, but also “a protective property may be a characteristic of a coating that, when applied, protects a wearer or users” (for example, an anti-bacterial property). Id. at 12:36–51 (emphasis added). Neither Jawbone nor Dr. Young address why, if the purpose of the outer molding is to protect a user, it would be necessary to fully enclose the inner moldings instead of merely covering the surface that is to be in contact with a user. Dr. Young also cites, as evidence of the protective nature of the outer molding, several dependent claims which recite that the outer molding has protective features such as “protect[ing] against ultraviolet radiation” (claim 4) or a “waterproof seal” (claim 6). Ex. 2001 ¶ 51. The flaw in this argument is that these dependent claims depend from claim 1, not claim 16. While they may signal that the outer molding of claim 1 has a protective purpose, they are not relevant to claim 16. By contrast, claim 16 recites that at least one of the inner moldings has a protective property, and the dependent claims further specify protective properties for that inner molding, such as waterproofing, oleophobicity (fingerprint resistance), or antibacterial. Dr. Young hypothesized that there might be a reason to make an inner molding antibacterial, even if it is completely enclosed (Ex. 1029 61:4–13), but was unable to provide a single example of a product with a fully encased, antibacterial inner molding (id. at 62:24–63:7). The fact that claim 16’s inner molding has a protective property, therefore, diminishes the credibility of Dr. Young’s testimony that the outer molding must fully encase and protect the inner molding. In sum, we disagree with Dr. Young’s conclusion that the outer molding of claim 16 must have a protective property, and that in that context the only reasonable construction of “covers all or substantially all” is a molding that encases or encloses the inner molding.5 Jawbone’s remaining” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Reviewing Fitbit’s assertions regarding the written description and figures of Lo, we find that the reference discloses in a single embodiment all limitations of claim 16. Jawbone does not challenge the Petition as to the first two steps of claim 16, and we find that Lo discloses both applying a protective material substantially over one or more of a plurality of elements, and forming a protective inner molding substantially over that protective material. Furthermore, for the reasons discussed above, we find that Lo’s transmission medium is an outer molding that covers all or substantially all of the inner molding. With respect to dependent claims 17–19, 23, and 26, we find that Lo discloses the additional elements of these claims as set forth by Fitbit in its Petition. Pet. 24–28. For example, claim 18 requires that the protective property of the inner molding is waterproofing, and claim 19 recites water-resistance. We find that Lo discloses that its plastic housing provides water resistant properties. Ex. 1003, Abstract, ¶ 121. Jawbone does not contest any of these additional claim limitations or argue separately the patentability of the dependent claims apart from independent claim 16. Instead, Jawbone relies on its argument that there is no outer molding as recited in claim 16 (PO Resp. 23), and that Fitbit improperly combined embodiments (id. at 26), arguments we discussed and rejected above. For these reasons, and based on a review of the complete record, we find claims 16–19, 23, and 26 are anticipated by Lo.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Fitbit responds by arguing that, even if Lo requires ultrasonic transmission, a person of skill in the art “would have naturally selected a coating that does not render the Lo heart monitor useless.” Pet. Reply 23. While this is true, it also admits the premise of Jawbone’s argument. In other words, if the coatings of Huang render Lo’s monitor useless, a person of ordinary skill would not have combined Huang with Lo. Nevertheless, we do not agree with Jawbone’s characterization of Lo as describing ultrasonic transmission of the monitor as “critical.” The portion of Lo cited by Jawbone describes prior art devices, and states that “[p]rior ultrasonic monitors require applying water or an aqueous gel between the transducer module and the living subject to eliminate any air gap.” Ex. 1003 ¶ 17 (emphasis added). There is no statement that the plastic housing of the module—the “inner molding” of claim 16 that must have the protective properties supplied by Huang—must be ultrasonically transmissive. Indeed, it is the transmission medium of Lo that is explicitly described as having ultrasonic transmission properties, and Lo’s transmission medium addresses this deficiency in prior art devices. Id. at 58–59. Lo does not state whether its plastic housing is suitable for ultrasonic transmission, and there is no basis for concluding that the addition of Huang’s coatings—whether or not they disrupt ultrasonic transmission— would result in a non-functional device. We find that Fitbit, relying on the testimony of Dr. Cairns, has articulated a reason with rational underpinning for combining the coatings of Huang with the device of Lo. Pet. 29–30 (stating that it would have been obvious to “utilize the well understood application of hydrophobic materials, such as in Huang, to have imparted protective properties to the plastic housing in Lo”); Ex. 1002 ¶¶ 64–66. This combination would have been within the level of ordinary skill in the art, on which the experts largely agree.9 Jawbone’s arguments do not convince us otherwise. Furthermore, we find that the combination of Lo and Huang in this manner teaches all limitations of claims 20–22 for the reasons given by Fitbit, assertions that” slip op. at 30
Patent outcomesUS 8,529,811 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,529,811 - Neste Oil Oyj v. Reg Synthetic Fuels, LLCSome claims unpatentablePTAB · Jul 26, 2017 · IPR2013-00578 · APJ Christopher L Crumbley · IPR · Remand
Claims 1, 3, 4, and 8 are unpatentable as anticipated by Craig; claims 2 and 5 are not proven unpatentable because Dindi is not prior art.
RulingsRemand decision- RemandDecided for patent owner
“To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentableNot shown unpatentable
“To remove Dindi as a prior art reference, the record must establish either: (1) a conception and reduction to practice before the filing date of Dindi; or (2) a conception before the filing date of the Dindi patent combined with diligence and reduction to practice after that date. See Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013). The Federal Circuit held that the record before us establishes, with sufficient corroboration, that Mr. Abhari conceived of the invention of claims 2 and 5 of the ’804 patent on April 29, 2008. REG Synthetic Fuels, 841 F.3d at 963. It is undisputed that Dindi was filed on June 13, 2008, and that Mr. Abhari filed on December 4, 2008 the application that issued as the ’804 patent. Dindi is not prior art—and, therefore, Neste’s ground of unpatentability fails—if either: (1) Mr. Abhari actually reduced to practice the invention of claims 2 and 5 between April 29 and June 13, 2008, or (2) Mr. Abhari exercised reasonably continuous diligence between June 13 and December 4, 2008, when the invention was constructively reduced to practice by filing of a patent application. Because, as set forth below, we find sufficient evidence of actual reduction to practice, we do not address Mr. Abhari’s alleged diligence.” slip op. at 5
- ExcludeNot reached
“As noted above, the Federal Circuit vacated our decision on Neste’s Motion to Exclude as to Exhibits 2012, 2013, 2057, and 2062, for further consideration of the hearsay objections in light of the decision on appeal, “because [they] may be relevant for diligence and reduction to practice.” REG Synthetic Fuels, 841 F.3d at 965. Upon review, however, we have determined that we need not rely on any of the exhibits in question to reach our decision in REG’s favor. For this reason, Neste’s objections to the exhibits are moot, as we would have found against Neste on the merits regardless of the outcome of the Motion.” slip op. at 19
Patent outcomesUS 8,231,804 mixed§ 102 anticipationPatents in suitUS 8,231,804 - Micron Technology, Inc. v. President And Fellows Of Harvard CollegeInstitution deniedPTAB · Jul 24, 2017 · IPR2017-00666 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reason to replace Min’s TEMAT precursor with Vaartstra’s metal alkylamide mixtures in the claimed ALD process.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of the foregoing, we determine that Petitioner has not set forth sufficient articulated reasoning supported by factual underpinnings to explain why one of ordinary skill in the art would have sought to replace TEMAT in Min’s process with the multi–metal alkylamide precursor mixtures of Vaartstra. Accordingly, Petitioner has not demonstrated a reasonable likelihood that claim 1 of the ’016 patent would have been obvious over the combination of Vaartstra and Min set forth in the Petition.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“advantageous . . . because it allows for strict control of the thickness of the formed layer”), 2:39–45 (explaining that Vaartstra’s CVD process provides “multi–metallic films having metal stoichiometries within tight specifications”); Prelim. Resp. 26–27. Thus, on this record, we agree with Patent Owner that Petitioner has not explained sufficiently why one of ordinary skill in the art would have sought to use Vaartstra’s precursors in Min’s process “to achieve a goal that has already been achieved” in Vaartstra. Prelim. Resp. 26. To the extent Petitioner proposes modifying Vaartstra by applying Min’s ALD process, Petitioner does not identify any advantages in doing so that are not already present in Min. Pet. 43 (“A POSA would further have understood that Min’s ALD process with TEMAT provides these benefits.”). In short, regardless of whether the combination is analyzed as using Vaartstra’s precursors in Min’s ALD process, or as modifying Vaartstra’s process from a CVD process to Min’s ALD process, Petitioner has not shown why this modification would provide any benefit over Min’s ALD process using TEMAT.” slip op. at 9
§ 103 obviousnesscites KSRPatents in suitUS 8,334,016 - PTAB · Apr 17, 2017 · IPR2016-01185 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution, finding the Petition insufficient to show a reasonable likelihood of prevailing on any challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 7,809,373 B2 (Ex. 1001, “the ’373 patent”), contending that “the Decision misapprehends or overlooks the Petition’s application of the prior art to the language of independent claims 15 and 24.” Paper 8 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As determined in the Institution Decision, the Petition’s reliance on this disclosure does not sufficiently support its contention that “[i]n order for ‘contention free’ ranging to be performed, two mobile stations cannot transmit the same ranging code at the same time,” nor its conclusion that, “[a]ccordingly, in a contention free ranging procedure, only one mobile station is allowed to send the ranging code during a particular time.” Dec. 15; Pet. 46 (citing Ex. 1003 ¶ 108; Ex. 1018 ¶¶ 98, 105, 129). As indicated expressly in the cited passage of Etemad, it is also possible for contention-free ranging to be achieved through channel reservation rather than with a dedicated preamble. “Notably, this is different from the problem addressed by the ’373 patent, which seeks to avoid collisions when two mobile terminals simultaneously attempt to use the same random access channel to effect handovers.” Dec. 16 (citing Ex. 1001, col. 4, l. 66–col. 5, l. 7).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, and more significant, even if Son, in isolation, disclosed a “dedicated preamble,” the Petition insufficiently articulates a compelling argument that the combined disclosures of Son and Etemad meet the specific combination of limitations recited in the challenged claims. In its argument, the Petition contends that the combination of Etemad and Son “teaches that the target base station ‘assigns . . . a ranging code’ to the mobile station for use during the handover” and that “[t]he mobile station uses this assigned ranging code to perform a ‘contention-free’ initial ranging procedure with the target base station.” Pet. 45 (citing Ex. 1005, col. 5, ll. 43–46, Fig. 2) (alterations by Petitioner). The portion of Etemad cited by the Petition to support this contention is:” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“But this contention, set forth in the Petition, is too conclusory to satisfy Petitioner’s burden. In particular, we agree with Patent Owner that “[t]his disclosure makes no reference to or explanation of a dedicated preamble, and Son provides no detail on how the code is assigned or how it is used by the terminal.” Prelim. Resp. 18. Although the Petition cites to testimony by Petitioner’s expert, Jonathan Wells, Ph.D., to support its contention, the cited portion of the expert testimony merely repeats the contention without adequate elaboration or explanation and is, therefore, similarly conclusory. Ex. 1003 ¶ 99; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). Nor is the Petition’s additional citation of portions of U.S. Pat. Publ. No. 2005/0041573 (“Eom”) sufficient to support its contention. The Petition does not adequately explain how the cited portions of Eom—which are not applied directly in any ground asserted by Petitioner—inform an understanding of Son’s disclosure to reach the conclusion Petitioner advocates.” slip op. at 4
§ 103 obviousnessPatents in suitUS 7,809,373 - PTAB · Apr 17, 2017 · IPR2016-01347 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied rehearing and left institution denied because the petition did not sufficiently support its obviousness challenges to claims 1, 8, 15, and 24.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Decision” or “Dec.”) denying institution of an inter partes review of U.S. Patent No. 7,809,373 B2 (Ex. 1001, “the ’373 patent”), contending that “the Decision misapprehends or overlooks the Petition’s application of the prior art to the language of independent claims 1, 8, 15 and 24.” Paper 8 (“Req. Reh’g”), 1. When rehearing a decision by the Board on whether to institute a trial, the Board reviews the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that our Institution Decision should be modified lies with 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.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As determined in the Institution Decision, the Petition’s reliance on this disclosure does not sufficiently support its contention that “[i]n order for ‘contention free’ ranging to be performed, two mobile stations cannot transmit the same ranging code at the same time,” nor its conclusion that, “[a]ccordingly, in a contention free ranging procedure, only one mobile station is allowed to send the ranging code during a particular time.” Dec. 15; Pet. 37 (citing Ex. 1003 ¶ 108; Ex. 1018 ¶¶ 98, 105, 129). As indicated expressly in the cited passage of Etemad, it is also possible for contention-free ranging to be achieved through channel reservation rather than with a dedicated preamble. “Notably, this is different from the problem addressed by the ’373 patent, which seeks to avoid collisions when two mobile terminals simultaneously attempt to use the same random access channel to effect handovers.” Dec. 16 (citing Ex. 1001, col. 4, l. 66–col. 5, l. 7).” slip op. at 6
- BurdenNot shown unpatentable
“But this contention, set forth in the Petition, is too conclusory to satisfy Petitioner’s burden. In particular, we agree with Patent Owner that “[t]his disclosure makes no reference to or explanation of a dedicated preamble, and Son provides no detail on how the code is assigned or how it is used by the terminal.” Prelim. Resp. 19. Although the Petition cites to testimony by Petitioner’s expert, Jonathan Wells, Ph.D., to support its contention, the cited portion of the expert testimony merely repeats the contention without adequate elaboration or explanation and is, therefore, similarly conclusory. Ex. 1003 ¶ 99; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). Nor is the Petition’s additional citation of portions of U.S. Pat. Publ. No. 2005/0041573 (“Eom”) sufficient to support its contention. The Petition does not adequately explain how the cited portions of Eom—which are not applied directly in any ground asserted by Petitioner—inform an understanding of Son’s disclosure to reach the conclusion Petitioner advocates.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Second, and more significant, even if Son, in isolation, disclosed a “dedicated preamble,” the Petition insufficiently articulates a compelling argument that the combined disclosures of Son and Etemad meet the specific combination of limitations recited in the challenged claims. In its argument, the Petition contends that the combination of Etemad and Son “teaches that the target base station ‘assigns . . . a ranging code’ to the mobile station for use during the handover” and that “[t]he mobile station uses this assigned ranging code to perform a ‘contention-free’ initial ranging procedure with the target base station.” Pet. 37 (citing Ex. 1005, col. 5, ll. 43–46, Fig. 2) (alterations by Petitioner). The portion of Etemad cited by the Petition to support this contention is:” slip op. at 5
§ 103 obviousnessPatents in suitUS 7,809,373 - Samsung Electronics Co., Ltd. v. Daniel L. FlammRehearing deniedPTAB · Apr 14, 2017 · IPR2016-01510 · APJ Michael R Zecher · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution for claims 13–26, 64, and 65 because the cited combination did not account for selecting a substrate holder’s thermal mass.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Samsung in turn.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“deficiency we identify above. That is, even if we were to accept that Samsung’s declarant, Dr. Shanfield, demonstrates that Incropera’s equation 5.6 may be used to select thermal mass, he does not explain how such a selection implicates selecting the thermal mass of a substrate holder. To support its assertion that the combined teachings of Okada I and Samsung account for selecting the thermal mass of a substrate holder, we recognize that Samsung, once again, directs us to the testimony of Dr. Shanfield. Ex. 1002 ¶ 66. This cited testimony for Dr. Shanfield merely demonstrates that certain elements required by independent claim 13 were known independently in the prior art by explaining that, upon identifying certain parameters (i.e., Okada I’s temperature A, temperature B, and time period between two and ten seconds), the identified parameters may be used in Incropera’s equation 5.6 in order to achieve the end result of selecting the thermal mass of Okada I’s electrode 25. See id. The U.S. Supreme Court, however, has cautioned that an invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, we remain unpersuaded that combining each of the elements taught by Okada I and Incropera in the manner proposed by Samsung and Dr. Shanfield accounts for the specific requirement of independent claim 13 at issue in this proceeding, which begins with selecting the thermal mass of a substrate holder in order to ensure that the substrate holder changes a specific temperature over a discrete period of time. See Dec. 19–20. In other words, although Samsung directs us to disclosures in both Okada I and Incropera regarding the concept of thermal mass, there is insufficient teaching or suggestion in the current record of using the thermal mass of a substrate holder as a variable to control the rate of temperature change over a discrete period of time.” slip op. at 5
None - Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentablePTAB · Mar 7, 2017 · IPR2015-01833 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 4, 22, 23, 100, 113–116, 118, 119, 309–312, 314, 315, and 319 were not proven unpatentable because the asserted combinations did not establish the claimed bias signal.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“ordinary meaning of “bias signal” is “a signal having a steady predetermined level.” Resp. 24; Reply 6. The parties also agree that at least some information signals may be considered “bias signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. “to gate,” “desired harmonics,” and “pulse shaping module” Patent Owner asserts that we need not construe any of these terms because they “are not material to this IPR and should not be addressed or decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 9 (citing Ex. 1002 ¶¶ 24–32). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–32. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 6–7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶ 160). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” limitations recited in claims 4 and 22, and the claims that depend from each.6 Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny and Maas would have rendered the subject matter of claims 4, 22, 113–116, 119, 309–312, 315, and 319 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 6,091,940 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,091,940 - Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.No claims unpatentablePTAB · Mar 7, 2017 · IPR2015-01834 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 21, 25, 26, 281, 283–286, 288, 289, 293, 363–366, 368, 369, and 373 were not proven unpatentable because the asserted obviousness combinations did not establish the claimed bias or reference signal.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“information signals may be considered “bias signals” and “reference signals.” The crux of the parties’ disagreement is which type of information signal. The ’940 patent defines “information signal” as “[t]he signal that contains the information that is to be transmitted. As used herein, it refers to the original baseband signal at the source.” Ex. 1001, 8:48–50 (emphasis added). Thus, the ’940 patent clearly defines “information signal” as “the original baseband signal at the source.” The ’940 patent defines “baseband signal” as: Any generic information signal desired for transmission and/or reception. As used herein, it refers to both the information signal that is generated at a source prior to any transmission (also referred to as the modulating baseband signal), and to the signal that is to be used by the recipient after transmission (also referred to as the demodulated baseband signal). Ex. 1001, 7:41–47. The ’940 patent clearly gives a broad meaning to “baseband signal” such that it encompasses any signal desired for transmission and/or reception, but the definition of “information signal,” as quoted above, does not refer to any baseband signal. Rather, it refers to “the original baseband signal at the source.” Ex. 1001, 8:48–54. By including the terms “original” and “at the source,” the meaning of information signal, as defined by the ’940 patent, is more limited than the definition of a baseband signal. Thus, Petitioner’s contention that the meaning of “information signal,” and, hence, “bias signal” should be expanded to include any “baseband signal” (Reply 4) improperly takes “information signal” out of context. Petitioner’s contention eliminates the terms “original” and “at the source” from the ’940 patent’s definition of “information signal,” without providing any reason why those terms should not be considered. Accordingly, we agree with Patent Owner and construe “bias signal” to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source”; and we construe “reference signal” to mean “the original baseband signal at the source.”6” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“decided by the Board.” Resp. 31. Petitioner does not discuss the constructions of these terms in its Reply. See generally Reply. Based on the arguments before us, construing these terms does not appear to resolve a controversy between the parties. Accordingly, we agree with Patent Owner that we need not construe expressly any of these terms for purposes of this Decision.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“4. Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10 (citing Ex. 1002 ¶¶ 24–29). Petitioner’s argument is supported by Dr. Larson’s testimony. Ex. 1002 ¶¶ 24–29. Patent Owner does not contest Petitioner’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument in its Reply is based on its incorrect claim construction of “bias signal” as encompassing any information signal. See, e.g., Reply 7 (asserting that the “bias signal” is met by Dobrovolny’s disclosure because it teaches “an information carrying High Level RF Source for reception”) (citing Ex. 1023, 1:14–17; Ex. 1002 ¶¶ 154, 210). As explained above, “bias signal” is understood to mean “(1) a signal having a steady, predetermined level or (2) the original baseband signal at the source.” See supra Section II.A. Petitioner does not argue, and has not established, that Dobrovolny’s RF Source signal is either at a steady, predetermined level or is the original baseband signal at the source. Thus, Petitioner has not shown that Dobrovolny discloses the “bias signal” recited in claim 21 and the claims that depend therefrom, or the “reference signal” recited in claim 25 and the claims that depend therefrom.8 8 Petitioner does not rely upon Maas or Nardozza as disclosing a “bias signal” or “reference signal.” See Pet. 37–38 (relying only on Dobrovolny), 52–53 (same). Accordingly, Petitioner has not shown, by a preponderance of the evidence, that the combination of Dobrovolny, Maas, and Nardozza would have rendered the subject matter of claims 21, 25, 26, 281, 283–286, 289, 293, 363–366, 369, and 373 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 20
Patent outcomesUS 6,091,940 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,091,940
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.