• Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.

  RulingsFinal written decision

  • BurdenMixed

    “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12

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

    “one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19

  Patent outcomesUS 11,298,166 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,298,166
• Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.Some claims unpatentable
  PTAB · Jul 5, 2023 · PGR2022-00023 · APJ Robert A Pollock · PGR · Final written decision

  The Board held claims 2, 3, 5, 14, 26, 27, and 30 unpatentable for lack of written description, but did not find claims 1, 6, and 25 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We do not discern a substantive difference between the parties’ respective definitions for the level of ordinary skill in the art. Although Petitioner did not expressly recite hematological malignancies, Petitioner did refer to expertise in clinical oncology and cancer biology, which would encompass the blood cancers recited by Patent Owner. Accordingly, we find the parties’ respective definitions to be equivalent and consistent with the level of ordinary skill in the art as reflected by 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 (Fed. Cir. 1985))). We find that Dr. Gordon and Dr. Sharman are both qualified to opine from the perspective of a skilled artisan as both are persons of at least ordinary skill in the art, based on either party’s definition. Ex. 1020, ¶¶ 8– 19; Ex. 2008, ¶¶ 11–24.” slip op. at 7

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We find Dr. Sharman’s statements and deposition testimony have substantially greater credibility than Dr. Gordon’s statements and deposition testimony based on Dr. Sharman’s significantly greater relevant experience in treatment and study of hematological cancers using chemotherapeutic agents and based on Dr. Sharman’s superior recollection and more complete analysis of the record found in the ’942 patent. In particular, we found Dr. Gordon’s statement that no example “includes” every element of claim 1 factually incorrect as contradicted by at least Figure 2 of the ’942 patent where the ordinary understanding of includes to mean encompasses is used. See Ex. 1020 ¶ 131. Ebit Sys. Am., LLC v. Thales Visonix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (“The PTAB [i]s entitled to weigh the credibility of the witnesses ....”).” slip op. at 16

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

    “The parties do not identify any issue relating to the preamble that needs to be addressed to resolve the sole written description challenge and the parties do not dispute that the transitional term “comprising” is “inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” Georgia-Pacific Corp. v. US. Gypsum Co., 195 F.3d 1322, 1327 (Fed. Cir. 1999). We therefore find that there are no terms that need claim construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateWritten description inadequateMixed

    “We find that Figure 2 of the ’942 patent and the associated example provide literal and express descriptive support for claim 1 of the ’942 patent. As descriptive support for claim 1, the ’942 patent teaches treatment of leukemia or lymphoma, including chronic lymphocytic leukemia and small lymphocytic lymphoma (Ex. 1001, 16:21–22), by orally administering the Bcl-2 inhibitor GDC-0199 (Ex. 1001, 17:16) in escalating doses of 50 mg per day during a first week and 100 mg per day during a second week (Ex. 1001, Figure 2). Claim 1 of the ’942 patent, as written, does not exclude performance of the complete combination therapy shown in Figure 2. Rather, the reasonable understanding of the term “comprising” in claim 1 encompasses monotherapy with GDC-0199 alone and combination therapy with obinutuzumab. Both embodiments are described in the Specification. As Patent Owner points out, the ’942 Specification is replete with disclosures to administer GDC-0199 by itself to a patient, stating” slip op. at 16

  Patent outcomesUS 10,993,942 mixed
  Claim construction§ 112 disclosure
  Patents in suitUS 10,993,942
• Pelican Biothermal, LLC v. Va-Q-Tec AGSome claims unpatentable
  PTAB · Jun 16, 2023 · PGR2021-00085 · APJ Barry L Grossman · PGR · Final written decision

  The Board granted the motion to amend but held amended claim 64 unpatentable as anticipated by NanoCool 98596-type products and obvious over the cited combinations; all other amended claims were not shown unpatentable.

  RulingsFinal written decision

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

    “VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has demonstrated by a preponderance of the evidence that amended claim 64 is unpatentable; FURTHER ORDERED that Patent Owner’s Non-Contingent Motion to Amend is granted for claims 64 and denied for all other amended claims; and” slip op. at 77

  • ExcludeMotion to exclude, deniedDenied

    “A. Status as Prior Art Is a Substantive Issue, Not an Evidentiary Issue. A motion to exclude is not an appropriate mechanism for challenging the sufficiency of evidence, such as whether a reference qualifies as prior art, or the proper weight that should be afforded an argument. See Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113, 4, 8–9 (PTAB September 3, 2015); PTAB Consol. Trial Practice Guide 79 (Nov. 30 Mr. Zumwalt testifies that other NanoCool products, designated by product number 85430 and 98630, also have the same configuration as the 98830 product and are made by the same process. Thus, “the 98830, 85430, and 98630 products can be collectively referred to as ‘98830-type’ products all having the same relevant design.” Ex. 1030 ¶ 17. 2019) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”); Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02187, Paper 42,17 (PTAB May 21, 2019) (status as prior art “is a substantive issue, not an evidentiary issue.”) Thus, whether the NanoCool 98830 product is prior art is not the proper basis for Patent Owner’s Motion to Exclude evidence concerning the NanoCool 98830 product.” slip op. at 29

  • Skill levelSkill level board ownOther

    “Neither Petitioner nor Mr. Harber provide any analysis of the factors pertinent to a determination of the level of ordinary skill, identified above, to support their conclusory statements. We give Mr. Harber’s conclusory testimony minimal probative weight. 37 C.F.R. § 42.64(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.”). Moreover, there is no persuasive evidence to which we have been directed of the need for specific education or experience in biological or chemical technologies related to the claimed containers and inserts.” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “With regard to the level of ordinary skill in the art, Petitioner asserts that a person of ordinary skill would have had “a bachelor’s degree or higher degree in biological, chemical or mechanical engineering, or related sciences, and at least two to five years of experience in designing and testing ISCs [insulated shipping containers] depending on education level.” Pet. 9 (emphasis added) (citing Ex. 1002 ¶¶ 23–24). Exhibit 1002 is the Declaration testimony of Mr. Paul Haber. Mr. Harber actually states a slightly different level of ordinary skill. Mr. Harber testifies: The hypothetical POSITA would have: (i) at least a bachelor’s degree in biological, chemical or mechanical engineering, or related sciences, and have at least three to five years of experience in designing and testing ISCs [Insulated Shipping Containers][29]. Such a person may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in engineering, or related sciences, and have at least two to three years of experience in designing and testing ISCs. 29 See Ex. 1002 ¶ 23. Ex. 1002 ¶ 24 (emphasis added). Mr. Harber also testifies that “[t]hese descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.” Id.” slip op. at 25

  Patent outcomesUS 10,766,685 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,766,685
• Amphastar Pharmaceuticals, Inc. v. Aegis Therapeutics, LLCSome claims unpatentable
  PTAB · Feb 9, 2023 · IPR2021-01324 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1, 2, and 7–17 are unpatentable under §102 or §103; claims 3–6 and 18–20 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “in Table 1 and the formulations of Potta claim 21 (i.e., ‘from about 0.1% w/w to about 15% w/w epinephrine or a salt thereof’), because such formulations would elicit the desired biological or medicinal response.” Ex. 1002 ¶ 272. Dr. Weinstein provides an essentially identical opinion. Ex. 1003 ¶ 286. Neither declarant supports their opinion with any explanation as to why the Potta formulations would provide the claimed plasma epinephrine concentration or elicit a biological or medicinal response. Accordingly, we do not credit these opinions, and determine that Petitioner has not met its burden to establish that Potta inherently anticipates claim 3. See n re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”).” slip op. at 29

  • ExcludeMotion to exclude, deniedDenied

    “As the moving party, Petitioner bears the burden of establishing that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Having considered the arguments and evidence of record, we determine that Petitioner has not met its burden of proof. We agree with Patent Owner that “[n]o bright line rule prohibits the consideration of post-priority date evidence,” and that such evidence is permissible in certain contexts. Opp. 2–3. On this record we do not find that there is sufficient cause to exclude the challenged exhibits, because any consideration by the Board of these exhibits has taken into account their alleged post-priority date status. Thus, we do not find that maintaining the exhibits in this proceeding results in any unfair prejudice to Petitioner, or that the exhibits have confused the issues before us. Accordingly, we deny Petitioner’s motion to exclude.” slip op. at 73

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “For the above reasons, on the full trial record we determine that” slip op. at 26

  Patent outcomesUS 10,682,414 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,682,414
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. 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))).” slip op. at 11

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

    “For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18

  Patent outcomesUS 9,456,449 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,456,449
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01207 · APJ John R Kenny · IPR · Final written decision

  Claims 1–6, 8–10, 15, and 16 are unpatentable as anticipated by Grupp ’483; claims 11, 12, and 14 were not shown unpatentable because Grupp ’483 is not prior art to them.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “We agree with Patent Owner. “[A p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide5 73; see also 37 C.F.R. § 42.23(b). Here, Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of 5 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. titanium” recited in claims 6, 8, 10, 11, and 14–16, was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015). Accordingly, we will not consider the breadth challenge to a metal oxide comprising an oxide of titanium that Petitioner presented for the first time in its Reply. As for the breadth challenge presented in the Petition—that the pre- 2011 priority applications do not describe the breadth of the class of metal oxides, that challenge is inapplicable here because claims 11, 12, and 14 narrow the recited class to comprising an oxide of titanium, which is a far narrower class. Dr. Schubert provides examples of numerous metal oxides that do not comprise oxides of titanium. Ex. 1022, Schubert Decl. ¶ 94 (hafnium oxide and zirconium oxide); Ex. 1053, Schubert Reply Decl. ¶¶ 18, 19 (see the compounds identified in that paragraph beyond titanium dioxide), 20. Petitioner does not dispute that the pre-2011 priority applications disclose a species within the scope of the recited genus. Pet. 18–22. To the contrary, Petitioner relies on one of the pre-2011 priority applications (Grupp ’483) as disclosing a species (with TiO2) as proof that claims 11, 12, and 14 are anticipated. See id. at 40–44. Thus, we determine that Petitioner has not proven that the pre-2011 priority applications fail to describe the genus of the metal oxide of the interface layer comprises an oxide of titanium. Therefore, Petitioner has not proven that Patent Owner is not entitled to the benefit of the pre-2011 priority applications for claims 11, 12, and 14 due to a lack of written description support. Accordingly, Petitioner has not proven that Grupp ’483 is prior art for those claims.” slip op. at 27

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed

    “2. Analysis We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide. Ex. 1001, 18:45–52. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 18:1–11 (emphasis added). The pre-2011 priority applications incorporate by reference U.S.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates claims 1–6, 8–10, 15, and 16. a. Claim 1 Petitioner argues that Grupp ’483 discloses an electrical junction, citing Grupp 483’s disclosure that “the present invention provides an electrical junction.” Pet. 27 (citing Ex. 1021, Grupp ’483, 3:44–47). Petitioner further argues that Grupp ’483 discloses a region in a semiconductor substrate by describing a source or drain of a transistor. Id. at 28 (citing Ex. 1022, Schubert Decl. ¶ 110). According to Petitioner, Grupp ’483 discloses a metal electrical contact to said region by describing “an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). Petitioner asserts that Grupp ’483 discloses “said region being electrically connected to said metal electrical contact through said interface layer” by describing “the present invention provides an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor and is configured to depin the Fermi level of the semiconductor while still permitting current flow between the metal and the semiconductor . . . .” Id. at 29 (quoting Ex. 1021, Grupp ’483, 4:21–26) (emphasis omitted). Petitioner further argues that Grupp ’483 discloses “said interface layer comprising a metal oxide and a semiconductor oxide” by describing an interface layer that includes (1) a passivation layer, which can be a semiconductor oxide; and (2) a separation layer, which can be titanium dioxide, a metal oxide. Pet. 29 (citing Ex. 1022, Schubert Decl. ¶ 114). Petitioner further asserts that Grupp ’483 discloses “being in contact with said region in the semiconductor substrate and said metal electrical contact” by describing “an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 1.” slip op. at 40

  • ExcludeOther

    “We dismiss Patent Owner’s Motion to Exclude as moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 11, 12, and 14. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre- 2011 priority applications for the class of comprising an oxide of titanium that is recited by those claims. Reply Br. 7–12. Because we decided not to consider that belated challenge (see Section III.A.1.b above), the Motion to Exclude is moot.” slip op. at 47

  Patent outcomesUS 10,090,395 mixed
  § 102 anticipationcites Phillips
  Patents in suitUS 10,090,395
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision

  Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13

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

    “Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3-Al interface at the surface. No buildup of Al2O3 is seen at the Al- Si interface.” Ex. 1121, 5. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross-examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25

  Patent outcomesUS 10,090,395 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,090,395
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01279 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3 and 13 are unpatentable as anticipated by Goodnick; claim 4 is unpatentable as obvious over Goodnick and Jammy. The other challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “resistivity” and “specific contact resistance” to be interchangeable. Dec. to Inst. 12. Neither party disagrees with this construction, and we apply the same construction for purposes of the Decision.” slip op. at 8

  • Expert testimonyMotion to exclude, deniedDenied

    “Although Patent Owner contends Dr. Goodnick’s declaration did not open the door for general questioning about metal oxides (PO Opp. 2–3), we agree with Petitioner that the proper scope of cross examination includes Dr. Goodnick’s understanding of what constitutes a distinct layer. A primary issue raised by Patent Owner against Petitioner’s challenge that Goodnick anticipates is that, notwithstanding its use of the term layer, Goodnick does not teach distinct layers that are required by the claim. See Section VI.B. One of those layers is a metal oxide layer (Ex. 1101, claim 1), in particular a titanium oxide layer (claim 6). In view of Dr. Goodnick’s checkerboard analogy in his declaration, it was proper for Petitioner to question Dr. Goodnick about the extent of materials in the checkerboard. Both parties argue there may be implications of Dr. Goodnick’s testimony for purposes of infringement litigation. See Pet. Opp. 4–6; PO Reply 3–4. We do not address those implications. The issue before us is whether Goodnick would have taught or suggested to a person of ordinary skill the limitations of the claims, which the parties agree include distinct layers of metal oxide and other semiconductor oxide. See Section VI.B. As Dr. Goodnick testified that his article did not teach such distinct layers, it was proper for Petitioner to explore Dr. Goodnick’s views concerning the composition of a layer during cross examination. In consideration of the above, Patent Owner’s motion to exclude the Goodnick Metal Oxide testimony is denied.” slip op. at 48

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

    “Taken in context, we agree that a person of ordinary skill would have understood Goodnick to refer to Al2O3 as a distinct layer. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3- Al interface at the surface. No buildup of Al2O3 is seen at the Al-Si interface.” Ex. 1116, 953. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 5–6 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7). In view of, inter alia, Dr. Goodnick’s cross examination testimony, we are persuaded by Dr. Schubert’s testimony that a person of ordinary skill would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173 ¶¶ 85–98.” slip op. at 20

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

    “that “the semiconductor region comprises an n-typed doped source or drain of a transistor.” Acknowledging that Goodnick “does not expressly disclose that its n-doped silicon semiconductor region ‘comprises an n-type source or drain of a transistor,’” Petitioner cites Jammy as disclosing this feature. Pet. 27. According to Petitioner, a person of ordinary skill would have combined the teachings of Goodnick and Jammy because Goodnick describes contact metallization processes for semiconductor devices and Jammy describes a semiconductor device. Id. at 28. Patent Owner asserts that Petitioner’s challenge to claim 4 based on the combined teachings of Goodnick and Jammy fails because it is premised on Goodnick teaching a stratified layer of Al2O3 distinct from SiO2. PO Resp. 60. As discussed above, we find that a person of ordinary skill would have understood Goodnick to disclose this feature. See Section VI.B. In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill would have had reason to combine the teachings of Goodnick and Jammy and that the combined teachings of Goodnick and Jammy would have suggested the limitations of claim 4 to a person of ordinary skill in the art.” slip op. at 24

  Patent outcomesUS 9,905,691 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,905,691
• Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentable
  PTAB · Jan 12, 2022 · IPR2020-01206 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–4, 13, 20, 22, and 25 were held unpatentable as anticipated by Grupp ’483; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed

    “mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide 734; see also 37 C.F.R. § 42.23(b). Here, 4 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of titanium” recited in claims 6, 8, 10, 11, and 14–16 was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019). Accordingly, we will not consider the breadth challenge to oxides of titanium that Petitioner presented for the first time in its Reply.” slip op. at 25

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Petitioner’s expert, Dr. Schubert, identifies a large number of metal oxides and multiple metal oxides that is expanded by multiple equilibrium species and notes that the metal oxide genus would be even further expanded to include non-equilibrium species. Ex. 1047, Schubert Decl. 2 ¶¶ 18–22. Dr. Schubert further emphasizes the significant variation in physical and chemical properties of such metal oxides. Id. at ¶¶ 27–51. Much of Dr. Kuhn’s analysis is premised on her assessment of the mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 21

  • ExcludeOther

    “Patent Owner’s Motion to Exclude is moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 6, 8, 10–12, 15–19, 26–29. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre-2011 priority applications for the oxide of titanium class recited by those claims. Pet. Reply7–12. Because we decided not to consider that belated challenge (see Section III.E.1.b), the Motion to Exclude is moot.” slip op. at 47

  Patent outcomesUS 9,905,691 mixed
  § 102 anticipation
  Patents in suitUS 9,905,691
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043

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.