• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentable
  PTAB · Jan 17, 2025 · IPR2023-01183 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9 and 10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9

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

    “constructions. First, we agree with Petitioner that the ’641 patent indicates that the charge cut-off voltage selected for a particular battery need not be a fixed property of the battery or something that is set by the design and chemistry of the battery. Consistent with this conclusion, the ’641 patent discloses that a “charging device controls the charge cut-off voltage of the single lithium-ion cell within a range from 4.3 V to 5.8 V.” Ex. 1001, 9:50– 55. This strongly suggests that the charge cut-off voltage is controlled by the charger and is not necessarily an inherent property of the battery. Patent Owner contends that this is merely an unclaimed embodiment, but the relevant disclosure states that the charging device for the “present invention” may be any type of device “with the proviso that said charging device controls the charge cut-off voltage.” Id. at 9:50–53.” slip op. at 12

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

    “charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122. Petitioner argues that because the battery of Uemura is charged “to” a maximum voltage of 4.3 V, Uemura discloses the claimed charge cut-off voltage under either Petitioner’s or Patent Owner’s construction of the term. Pet. Reply 11–12 (citing Ex. 1009 ¶ 81; Ex. 1044 ¶¶ 56–59). This argument is not persuasive because Mr. Juzkow unambiguously testified that charging in Uemura stopped when the applied voltage reached 4.3 V, and Uemura discloses that the battery was charged “at” a voltage ranging from 4.3 V to 2.0 V, not “to” such a voltage. Ex. 1009 ¶ 81; Ex. 2008, 113:2–13; Ex. 2006 ¶ 119 n.64; Sur-reply 9. In view of the foregoing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Uemura anticipates independent claims 1 and 5 of the ’641 patent.” slip op. at 21

  Patent outcomesUS 7,749,641 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,749,641
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 24, 2023 · IPR2021-01266 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 5, 8, and 12–13 are unpatentable over Reime; claim 11 is unpatentable over Reime and Hinckley. The remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’093 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 22 (quoting Pet. 10 (citing Ex. 1002 ¶ 47)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and open-ended. Id. Patent Owner proposes a different definition for one of ordinary skill in the art, but does not specifically address any deficiencies in Petitioner’s Petitioner’s obviousness arguments “are not affected [by] differences in the definitions.” Id. (citing Ex. 2056 ¶ 10). Because Petitioner’s definition of the level of skill in the art (excluding “at least”) is consistent with the ’093 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

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

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:48–51 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. The Specification supports this conclusion by disclosing detecting a user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 48:48–52 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 49:49–52 (“When the user’s fingers touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:25–28 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 50:58–61 (“When the user’s fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they are within the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

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

    “Patent Owner that Petitioner does not demonstrate by a preponderance of the evidence that one of ordinary skill in the art would have found it obvious to modify Reime’s teachings to distinguish between an object’s directions of motion. In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (holding that we must consider whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention). First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “First, we find that Reime’s teachings about tracking the up/down movement of an object (as opposed to left/right movement) relate to two-dimensional movement, rather than three-dimensional movement. Ex. 1010 ¶ 108. Second, we find that Reime’s teaching that “the sensitivity and the optical response of the light receivers . . . may vary from one application to another” does not suggest tracking three-dimensional movement. Id. ¶ 111. Rather, this passage relates to at what distance from a touchpad device Reime’s sensors detect an object (i.e., when is the object adjacent to the surface). Id. ¶¶ 74, 111. Hence, we find that Reime’s teachings do not provide sufficient reasoning to modify Reime in the manner Petitioner does. which in our view, and taken as a whole, uses impermissible hindsight to reconstruct the invention of claim 11. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57– 58; Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). In addition, we find that Dr. Bederson’s cited testimony is conclusory, and lacks the underlying factual support to guard against impermissible hindsight. See Ex. 1002 ¶ 97; Ex. 1035 ¶¶ 57–58. In sum, we find that Petitioner does not show that one of ordinary skill in the art would have been motivated to modify Reime in the manner Petitioner does. Hence, we determine that Petitioner does not demonstrate by a preponderance of the evidence that claim 11 would have been obvious to one of ordinary skill in the art over Reime.” slip op. at 43

  Patent outcomesUS 9,569,093 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.Some claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01239 · APJ John D Hamann · IPR · Final written decision

  Claims 31 and 41 are unpatentable as obvious over Yamaguchi; claims 15–18, 21, 22, 26, and 30 were not shown unpatentable on the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the following definition for one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Dec. on Inst. 20–21 (quoting Pet. 8–9 (citing Ex. 1002 ¶ 44)). This definition mirrors what Petitioner proposed, except we excised the phrase “at least” which modified the years of experience as that language is vague and openended. Id.” slip op. at 8

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

    “We agree with Petitioner and conclude that Patent Owner incorrectly attempts to exclude touching from the claims. Patent Owner incorrectly focuses on the term “propinquity” itself and ignores the surrounding claim language. That is, whether propinquity and touching are mutually exclusive, as Patent Owner argues, is inapposite. The claims do not recite having a particular propinquity. Rather, they recite “ha[ving] at least a predetermined degree of propinquity,” without reciting a lower bound. E.g., Ex. 1001, 67:2–4 (emphasis added). The plain meaning thus includes a degree of propinquity, and being closer. user’s fingers when they touch, or are located in propinquity to, a surface. See, e.g., id. at 47:28–31 (“[A] position of a user’s fingers is detected by means of a touch responsive input functionality and/or propinquity responsive input functionality.”), 48:26–29 (“When the user’s fingers’ touch, as in FIG. 20B, or is located in propinquity to, as in FIG. 20A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:1–4 (“When the user’s fingers touches, as in FIG. 21B, or is located in propinquity to, as in FIG. 21A, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”), 49:33–36 (“When the user's fingers touch, or are located in propinquity to, plate 1508, the light reflected from the fingers is detected by one or more of detector elements 1504 . . . .”). In other words, the Specification discloses that the fingers are sensed when they have at least the degree of propinquity, or are closer (e.g., touching). Id.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “Having reviewed the parties’ arguments, we agree with Petitioner and conclude that the claims do not require a detector assembly to be physically separate from (i.e., not interspersed with) a pixel array. See, e.g., Ex. 1001, 66:65–67:11. This is not to say that a detector assembly (e.g., detector elements) and the pixels of a pixel array are not distinct components, because they are in that they are separate components and perform different functions. See, e.g., id. at 4:44–54 (disclosing that detector elements detect electromagnetic radiation), 9:50–55 (disclosing display devices including a pixel array operative to provide a visually sensible output), 36:41–46 (disclosing discrete single-element detector elements that are commercially available). Rather, the gravamen of the parties’ dispute is whether claim 15 covers embodiments of the ’850 patent where detector elements are interspersed (at least along an edge) with pixels in a pixel array. Nothing in the claim language or Specification precludes claim 15 from covering those embodiments. Id. In addition, claim 15 recites the location of a detector assembly as being “arranged at least one edge of a viewing plane defining plate.” Id. at by including being behind, about, or along an edge within its scope. Ex. 1001, 42:61–67. Moreover, the ’850 patent illustrates that detector elements can be located, inter alia, along and behind an edge while being interspersed in a pixel array. See id. at Fig. 18F (showing detector elements 1324 along and behind an edge of plate 1328); cf. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (considering drawings for what they reasonably disclose to one of ordinary skill in the art). We find unavailing Patent Owner’s reliance on Becton. First, unlike in Becton where the same structure was relied upon, detector elements and a pixel array are separate components that perform separate functions. Becton, 616 F.3d at 1255 (accused infringer asserting “that the spring means and the hinged arm can be the same structure”); Ex. 1001, 4:44–54, 9:50–55, 36:41–46. Second, in Becton, the claims required one claim element to be “connected to” another claim element, which would be nonsensical if they were the same structure. See Becton, 616 F.3d at 1255. Here, claim 15 recites a location of a detector assembly (i.e., “arranged at least one edge of a viewing plane defining plate”), which is compatible with the detector assembly being interspersed in a pixel array. See, e.g., Ex. 1001, Fig. 18F.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “In addition, we have reviewed the testimony of the parties’ experts that Patent Owner cites, but we give it little, if any, weight in light of the clear disclosure of the intrinsic evidence. See Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455, 462 (Fed. Cir. 2016) (finding extrinsic evidence “is generally of less significance than the intrinsic record” in matters of claim construction); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (finding that when “an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term[,] . . . it is improper to rely on extrinsic evidence”). Lastly, our conclusion to not include “and does not include touching”” slip op. at 14

  Patent outcomesUS 8,624,850 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Apple Inc. v. Zipit Wireless, Inc.Some claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01130 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 2, 13, 19, 23, 24, 27, 29–31, 46, and 48–50 are unpatentable as obvious; claims 40–42 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts the level of skill adopted in the Final Written Decision in IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;4 Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 found that A [person of ordinary skill in the art] has an accredited bachelor’s degree in computer science, electrical engineering, or a related discipline that included coverage of wireless communications and the use of communication protocols used for real-time communications, and also at least two years of industry experience. In lieu of specific academic training, a [person of ordinary skill in the art] may draw upon appropriate industry experience to meet the foregoing requirements. Google ’837 IPR at 8. Patent Owner does not challenge Petitioner’s statement. See PO Resp. We apply this level of skill in the present case.” slip op. at 10

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

    “We now consider claim construction issues only to the extent necessary to dispose of the instant unpatentability grounds. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner offers no proposed claim constructions and applies the constructions determined by the Board in the IPR2019-01568 Final Written Decision. Pet. 3. Petitioner asserts that the remaining terms are given their “ordinary and customary meaning as understood by a Person of Ordinary Skill in the Art as of the Critical Date . . . and the patent’s prosecution history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)). Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11. We adopt the claim constructions determinations in IPR2019-01568 provided in the table below. Claim Term IPR2019-01568 Construction “generating textual characters and “graphical symbols” refers to graphical symbols in response to “graphical emoticons;” phrase is manipulation of keys on a data given its “ordinary meaning in the entry device”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

  Patent outcomesUS 7,894,837 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,894,837
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 9, 2021 · IPR2020-00486 · APJ Kristi L R Sawert · IPR · Final written decision

  Claims 31 and 33 are unpatentable under § 103; claim 34 is not shown unpatentable because the evidence and reasoning do not establish the associative cache limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 8–9 (citing Ex. 1056, 13–14; Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’789 patent and the asserted prior art. Inst. Dec. 26–27. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. We apply Petitioner’s definition of the level of ordinary skill in the art, as we did in the Institution Decision. Inst. Dec. 26–27. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’789 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “’099 patent as describing two seemingly disjointed packet exchanges involving two different clients or users (the first packet exchange between a client and the server and the second packet exchange between the client who has “inadvertently seen” the print service address and SAP #5) as belonging to the same “conversational flow.” And because Patent Owner’s proposed construction—that a “conversational flow” is client-specific—is inconsistent with the written description, we decline to limit a “conversational flow” to a specific client or user.” slip op. at 20

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

    “been motivated, based on Ferdinand’s teachings, to “modify Riddle’s monitor with an input buffer memory to temporarily store received packets and improve performance by limiting packet drops,” and that including such input buffer memory in a packet acquisition device in accordance with Riddle’s and Ferdinand’s teachings “amounts to nothing more than combining known prior-art technologies used in their ordinary and predictable manner to queue packet traffic.” Pet. 38 (citing Ex. 1006 ¶ 276). Moreover, we agree with Petitioner that “Riddle and Ferdinand are in the same field of endeavor and contain overlapping disclosures with similar purposes,” and “illustrate that it was well-known and ubiquitous in the art for networking devices to include database storage structures” such as buffers. Id. at 28–29 (citing Ex. 1009, 19:8–12, 20:22–22:12, 26:2–7, 28:14–17, Figs. 5, 7A–7C; Ex. 1006 ¶ 258). Patent Owner does not substantively address Petitioner’s contentions or otherwise argue that Riddle, either alone or in combination with Ferdinand, fails to disclose or suggest the input buffer memory limitation recited in claim 19. Accordingly, for the reasons detailed above, we are persuaded that Petitioner has shown by a preponderance of the evidence that Riddle and/or the combination of Riddle and Ferdinand teaches or suggests this subject matter, and that an ordinarily skilled artisan would have been motivated to combine the teachings of the prior art as Petitioner proposes. We therefore adopt the contentions set forth in the Petition and in Dr. Weissman’s Declaration as mapped to this undisputed limitation of claim 19 as our own findings. NuVasive, 841 F.3d at 974.” slip op. at 37

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “not established by a preponderance of the evidence that claim 34 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to the “associative cache subsystem” limitation of claim 34 does not even cite Wakeman but instead cites only the testimony of Dr. Weissman and the specification of the ’789 patent. See Pet. 81.14 And neither Dr. Weissman’s 14 To be sure, the discussion of claim 34 in the Petition also includes an internal cross-reference to the “discuss[ion] for claim 33,” discussed at pages 79–80 of the Petition. Pet. 81. Although the discussion of that assertion that the artisan “would have understood that Wakeman’s CAM cache is fully associative due to Wakeman’s lack of a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” Id. We agree with Patent Owner that Dr. Weissman “does not explain why the absence of a cache placement policy in Wakeman would lead [an ordinarily skilled artisan] to just assume that Wakeman was teaching using of an associative cache placement policy.” PO Resp. 54. Thus, we determine that Dr. Weissman’s testimony in this regard is entitled to little, if any, weight. 37 CFR § 42.65(a). Moreover, as Patent Owner argues and we agree, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not demonstrate that an ordinarily skilled artisan would have been motivated to implement Wakeman’s cache as a fully associative cache. PO Resp. 54–55 (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418). We do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 34 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 60

  Patent outcomesUS 6,954,789 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,954,789
• Juniper Networks, Inc. / Palo Alto Networks, Inc. v. Packet Intelligence LLCSome claims unpatentable
  PTAB · Sep 8, 2021 · IPR2020-00337 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 2, 7, 16, and 18 are unpatentable as obvious over Riddle, Ferdinand, and Wakeman; claim 3 was not shown unpatentable because the associative-cache obviousness showing lacked sufficient evidence and reasoning.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art and, thus, begin with the level of ordinary skill in the art. The level of ordinary skill in the art is “a prism or lens through which . . . the Board views the prior art and the claimed invention” to prevent hindsight bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). “[O]ne or more factors may predominate.” Id. Petitioner contends that an ordinarily skilled artisan would have “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), and one to two years of experience working in networking environments, including at least some experience with network traffic monitors and/or analyzers.” Pet. 7–8 (citing, inter alia, Ex. 1006 ¶¶ 195–201). In our Institution Decision, we adopted Petitioner’s articulation of the level of skill in the art, which we determined was consistent with the ’646 patent and the asserted prior art. Inst. Dec. 25– 26. In its Response, Patent Owner states that it “generally does not object to this finding.” PO Resp. 22. art, as we did in the Institution Decision. Inst. Dec. 25–26. We also maintain our determination that the definition offered by Petitioner is consistent with the teachings of the ’646 patent and the prior art of record. Cf. Okajima, 261 F.3d at 1355 (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 11

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

    “heart of the parties’ dispute (Ex. 1001, 2:37–45), we determine that the “for instance” phrase is exemplary and does not limit a “conversational flow” to a specific client or user. The phrase “for instance” is synonymous with “for example,” and necessarily indicates that “the running of an application on a server as requested by a client” exemplifies, but does not limit, the conversational flow to a server and a specific client or user. Our determination that the “for instance” phrase is exemplary and non-limiting is consistent with Patent Owner’s argument in its Preliminary Response that the “some” phrase (“some conversational flows involve more than one connection, and some even involve more than one exchange of packets between a client and server”) is non-limiting. Specifically, Patent Owner argued that the use of the word “some” necessarily means that “some conversational flows involve multiple connections, while, some involve a single connection.” Prelim. Resp. 24. Similarly here, while “conversational flow” certainly may involve the running of an application on a server as requested by a single client or user, “conversational flow” is not limited to a single client or user.” slip op. at 17

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

    “Petitioner has shown by a preponderance of the evidence that the combination of Riddle and Ferdinand renders obvious the recited flow-entry database limitations in view of the proper construction of “conversational flow.” See supra § III.C. Petitioner’s assertions, which we adopt, are supported by the cited evidence and are persuasive. Moreover, we are persuaded that a person of ordinary skill in the art would have been motivated to combine the teachings of Riddle and Ferdinand as proposed by Petitioner and supported by the testimony of Dr. Weissman. See Pet. 25–27 (citing Ex. 1006 ¶¶ 256–257, 259).” slip op. at 44

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

    “not established by a preponderance of the evidence that claim 3 is unpatentable over the combination of Riddle, Ferdinand, and Wakeman. We agree with Patent Owner that Petitioner provides insufficient evidence to support its contentions. Indeed, the Petition’s discussion with respect to claim 3 does not even cite Wakeman, but instead cites only the testimony of Dr. Weissman and the specification of the ’646 patent. See Pet. 75–76.12 And neither Dr. Weissman’s testimony nor the ’646 patent provides any persuasive support for Petitioner’s assertion that “a [person of ordinary skill in the art] would have understood that Wakeman’s CAM cache is fully associative due to Wakeman not disclosing a cache placement policy indicating there are no constraints on placement within Wakeman’s cache.” We agree with Patent Owner that “Dr. Weissman does not explain why the absence of a discussion of a cache placement policy in Wakeman would lead a [person of ordinary skill in the art] to just assume that Wakeman was teaching using of an associative cache placement policy,” and that his testimony in this regard is entitled to little, if any, weight. PO Resp. 58; 37 CFR § 42.65(a). As Patent Owner contends, Dr. Weissman’s statement that Wakeman could be modified to utilize an associative cache does not 12 To be sure, the discussion of claim 3 in the Petition also includes an internal cross-reference to the “discuss[ion] regarding element 1.3,” i.e., the “cache subsystem” limitation of claim 1, discussed at Pet. 57–59. Although the discussion of that limitation does include citations to Wakeman (see Pet. 58 (citing Ex. 1014, 1:20–28, 1:55–67, 2:31–49, 3:36–45, 4:31–40, 5:22–27, Figs. 2, 3)), however, notably absent from that discussion is any assertion that Wakeman specifically suggests an associative cache. motivated to implement Wakeman’s cache as a fully associative cache. Id. (citing In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990)). Although we agree with Petitioner that there is no indication that Wakeman disparages the use of an associative cache (Reply 28–29), there still needs to be “some rational underpinning to support the legal conclusion of obviousness” (KSR, 550 U.S. at 418), and we do not find such underpinning on the record before us. Accordingly, we determine that Petitioner has not shown by a preponderance of the evidence that claim 3 is unpatentable over Riddle in view of Ferdinand and further in view of Wakeman.” slip op. at 59

  Patent outcomesUS 6,771,646 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,771,646
• Apple Inc. v. MPH Technologies OYSome claims unpatentable
  PTAB · Nov 4, 2020 · IPR2019-00823 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5–8, and 10 are unpatentable as obvious; claims 2, 4, 9, and 11 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’494 patent as one who would have had “a Bachelor’s (B.S.) degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 2–5 years of academic or industry experience in the field of Internet security.” Dec. on Inst. 7–8 (citing Pet. 17; Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’494 patent. See generally PO Resp.; see also Ex. 2002 ¶ 22. Because Petitioner’s definition of the level of skill in the art is consistent with the ’494 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below. IV.” slip op. at 8

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

    “A. Unique Identity In the Petition, Petitioner argues that “unique identity” means “one or more parameters that uniquely identify a secure connection.” Pet. 18. In our Decision on Institution, “we concluded that no express claim construction of the term ‘unique identity’ [wa]s necessary” because in its Preliminary Response “Patent Owner d[id] not argue that RFC3104 or Grabelsky fails to disclose this term and, therefore, this term is not in controversy.” Dec. on Inst. 9 (citations omitted). In the subsequent papers, the parties confirm “that there is no reason to construe this term” because “Patent Owner does not dispute that some form of a unique identity is found in the primary reference.” PO Resp. 20; see also Pet. Reply 8 (agreeing that this term need not be construed). Accordingly, we find that no express construction of “unique identity” is needed. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 9

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

    “Specification support its proposed construction for this term. First, we find that Patent Owner conflates “mobility” with “mobile computer.”5 The Specification states that “the term mobility . . . meant moving from one network to another,” rather than the term “mobile computer” having this meaning. Ex. 1001, 4:34–38 (emphasis added). Moreover, the Specification uses the term “mobility” as a capability or condition. For example, the Specification uses the term “mobility” as follows: (i) certain “protocols are not well suited to mobility”; (ii) “[t]he intermediate host might be a Mobile IP home agent, that provides mobility for the connection between the mobile terminal and the home agent . . . .”; (iii) a disclosed “method solves the mobility problem, at the cost of adding extra headers to packets”; and (iv) “[o]ne example of a change in the [security association (‘SA’)] between the first computer and the intermediate computer is the change of addresses for enabling mobility.” Ex. 1001, 5:7–8, 5:17–21, 5:33–34, 7:56–58 (emphases added). In other words, mobility is a capability a mobile computer has, rather than being synonymous with mobile computer. As such, these passages from the Specification support Petitioner’s construction” slip op. at 17

  • Strike new argumentNot reached

    “Lastly,12 we find that Patent Owner’s remaining arguments for this limitation are premised on either its (i) proposed construction (i.e., a mobile computer is “a computer that moves from one network to another as opposed to a computer that is only capable of a static secure connection”), which we do not adopt; or (ii) inapposite argument that the mobile computer needs to 12 We need not, and thus do not, reach whether Petitioner’s arguments for this limitation in its Reply (Pet. Reply 8–14) are new arguments, as Patent Owner argues in its Sur-Reply (PO Sur-Reply 13–24), because we do not rely on them, but instead, we rely on Petitioner’s arguments, and citations to the record evidence, from the Petition. maintain the same secure connection. See PO Resp. 25–51. Thus, we find these arguments unavailing. Likewise, Dr. Borella’s declaration testimony is not helpful to our analysis as his “declaration employs the assumption that the ‘mobile computer’ recited in the claims moves from one network to another,” which is contrary to our construction, as we discuss above. Ex. 2010 ¶ 42; supra Section IV(B) (construing mobile computer).” slip op. at 37

  Patent outcomesUS 9,712,494 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,712,494
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCSome claims unpatentable
  PTAB · Mar 25, 2019 · IPR2017-01869 · APJ Elizabeth M Roesel · IPR · Final written decision

  Claims 1, 4–6, 9, and 10 are unpatentable as obvious over Igarashi and Tanaka (1999); claims 2 and 7 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “For purposes of our Institution Decision, we accepted the definition of a POSA provided by Dr. Bottoms. Dec. 10–11 (citing Ex. 2001 ¶ 31). Dr. Bottoms provides a “clarification” of the Board’s description, testifying that “[t]he specific industry experience would require process design experience—which is experience beyond managing fabrication equipment.” Ex. 2011 ¶ 36. Dr. Bottoms’ clarification is consistent with the level of skill reflected by the ’330 patent, which discloses process design options for making a low dielectric constant silicon nitride etch stop. Ex. 1001, 5:66-6:24. Dr. Neikirk testifies that, under Dr. Bottoms’ definition, a POSA has a higher degree of skill than under Dr. Neikirk’s definition, and the Board’s adoption of Dr. Bottoms’ definition would not change his opinions regarding obviousness. Ex. 1028 ¶ 14. We find there is little difference between the declarants’ definitions of a POSA, and the outcome of our patentability determinations would be the same, regardless of which definition we accept. For the sake of clarity, we adopt Dr. Bottoms’ definition of a POSA, including the recent clarification. Ex. 2011 ¶¶ 35, 36. We also rely on the cited prior art references as reflecting the level of ordinary skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedOther

    “After reviewing the qualifications of Dr. Neikirk and Dr. Bottoms, as set forth in each witness’s declaration and curriculum vitae, we find that each of these declarants has sufficient education and experience related to the subject matter of the ’330 patent to testify regarding the perspective of a POSA at the time of the invention. Ex. 1011 ¶¶ 2, 3; Ex. 1012; Ex. 2002; Ex. 2011 ¶¶ 8–20. See Trial Practice Guide Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018), available at https://go.usa.gov/xU7GP (“TPG Update”), 3 (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008))). D.” slip op. at 12

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

    “In the Institution Decision, we determined that it was not necessary to resolve the parties’ claim construction dispute. Dec. 9–10. Neither party challenges that determination. Petitioner contends that the asserted grounds of unpatentability apply under either party’s construction for the phrase “etch stop layer of silicon nitride.” Pet. 25 n.3. Patent Owner argues that this phrase is not limited to a layer of pure silicon nitride and allows for the presence of dopants and/or impurities. PO Resp. 8–10. Patent Owner does not, however, rely on its proposed claim construction for any patentability argument. In fact, Patent Owner acknowledges that the silicon nitride materials disclosed in the Low-K References satisfy Patent Owner’s proposed construction. PO Resp. 10. Under these circumstances, we agree with Petitioner that we do not need to resolve the parties’ claim construction dispute. Pet. Reply 2. Accordingly, consistent with the Institution Decision, we determine that we do not need to provide an express construction for any claim term for purposes of resolving the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). B.” slip op. at 10

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

    “copper interconnects need silicon nitride films as an etch stop, but that such films have a high dielectric constant, which causes an undesirable increase in the effective dielectric constant of the interconnect structure and increased parasitic capacitance, as compared with aluminum interconnects. Ex. 1021, 829-1, 829-2; see Pet. 18; Ex. 1011 ¶¶ 92, 93. As Petitioner correctly points out (Pet. 53–54), Tanaka (1999) cites Igarashi as an example of a copper interconnect system that is degraded by parasitic capacitance due to the high permittivity (dielectric constant) of silicon nitride etch stop films. Ex. 1017, 47-1 n.1. Tanaka (1999) discloses a low dielectric constant silicon nitride etch stop film as a solution to the problem of parasitic capacitance in copper damascene interconnect structures, such as Igarashi’s. Id. at 47-1, 47-2 (“New low-k SiN film, with a permittivity of 5.4 . . . should be the solution to realize Cu damascene interconnects . . . .”). Consistent with these express disclosures, Dr. Neikirk persuasively testifies that “Igarashi identifies a need for a low-k dielectric etch stop layer” and “Tanaka (1999) meets this need.” Ex. 1011 ¶ 94; see Pet. 18 (citing Ex. 1011, § VIII.C., which contains paragraph 94 of Dr. Neikirk’s testimony). Accordingly, we find Petitioner has shown by a preponderance of the evidence that a POSA would have been motivated to use the low dielectric constant silicon nitride etch stop film of Tanaka (1999) as the etch stop layer in the interconnect system of Igarashi. Patent Owner disputes whether Petitioner has established a reasonable expectation of success for the combination of Tanaka (1999)’s low dielectric constant silicon nitride etch stop film and Igarashi’s interconnect structure. PO Resp. 65. Although the Petition does not expressly discuss whether one of ordinary skill in the art would have had a reasonable expectation of success in combining Tanaka and Igarashi to arrive at the claimed invention, Petitioner shows a very close relationship between the teachings of Tanaka (1999) and Igarashi. Pet. 12–13, 17–18, 53–62. As discussed above and argued by Petitioner, Tanaka (1999): (1) cites Igarashi as an example of a copper interconnect system that suffers from parasitic capacitance due to the high dielectric constant of silicon nitride etch stop films, and (2) discloses a low dielectric constant silicon nitride etch stop film as a solution to the parasitic capacitance problem exemplified by Igarashi. Pet. 13, 18, 53–54; Ex. 1011 ¶¶ 74–79, 88–94; Ex. 1017, 47-1 & n.1; Ex. 1021, 829-1, 829-2. Petitioner establishes a reasonable expectation of success for the combination of Tanaka (1999) and Igarashi by demonstrating a strong correlation between the problem discussed by Igarashi—the high dielectric constant of silicon nitride films when used as etch stops for copper interconnects—and the solution disclosed by Tanaka (1999)—a low dielectric constant silicon nitride film for use as an etch stop layer in copper damascene interconnect structures. In re Inland Steel Co., 265 F.3d 1354, 1364 (Fed. Cir. 2001) (“[T]he strength of the correlation between the references gives rise to a reasonable expectation of success from combining them.”).” slip op. at 27

  Patent outcomesUS 6,388,330 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,388,330
• Fujifilm Corporation v. Sony CorporationSome claims unpatentable
  PTAB · Nov 7, 2018 · IPR2017-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

  • Expert testimonyPetitioner expert creditedMixed

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

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

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

  Patent outcomesUS 7,029,774 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,029,774

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.