- PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 9,023,203 - PTAB · Jun 24, 2024 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Institution
The Board instituted IPR on claims 1–5, 7, and 9–14 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“because they are premised on a misapplication of our precedent. Providing a document to the Office in an Information Disclosure Statement is sufficient to satisfy AB prong one as long as that “previously presented” art is “the same or substantially the same” as that presented in the Petition. See Advanced Bionics, 7–8 (holding that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent”). As we have already found, there are no material differences between the asserted art and the prior art involved during examination under BD factor (a). Petitioner provides no authority that requires us to interpret “involved during examination” under BD factor (a) as “used in a rejection” or “mentioned by the examiner” (Pet. 60), and we are aware of none. Patent Owner’s position, in that regard, appears to conflate the first AB prong (whether the art previously was presented to the Office) with an aspect of the second AB prong (the extent to which the Examiner considered that art).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The findings and conclusions set forth in this Decision are provided for the exclusive purpose of explaining our determination that Petitioner has met that standard on this record. slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29). Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See Prelim. Resp., generally. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the 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))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Petitioner’s proposed unchallenged definition because, on this record, it is consistent with the disclosures of the asserted prior art references.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the claimed term “aryl” should be construed to mean “an aromatic ring system.” See Pet. 20–23. Patent Owner does not propose a different claim construction at this stage of the proceeding. See Prelim. Resp., generally. After review of the preliminary record, we determine that no claim terms need to be construed for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,041,087 - PTAB · May 15, 2023 · IPR2023-00073 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’879 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“’879 patent would understand the term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“adhesion layer” is recited only in the challenged independent claims and in no other claims of the ’879 patent. See Ex. 1001, 13:45–16:65. And each of the independent claims recites “forming” an “adhesion layer” “on a back surface” of a “wafer.” Id. at 13:47–49, 13:54–56, 15:4–6, 15:45–47, 16:48– 50, 16:56–58. In view of this claim language, we construe the relevant claim language “forming an adhesion layer on a back surface of a wafer” as a whole, not just a single term “adhesion layer” in isolation from the rest of the claim language. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“[T]he claim limitation, as a whole, [] must be considered in claim construction.”); United States v. Telectronics, Inc., 857 F.2d 778, 781 (Fed. Cir. 1988) (holding that district court’s interpretation of the term “avoid” without regard to the rest of the limitation was error); see also Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1356 (Fed. Cir. 2011) (“[T]he context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms.”); IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1117 (Fed. Cir. 2011) (“We caution that claim language must be construed in the context of the claim in which it appears. Extracting a single word from a claim divorced from the surrounding limitations can lead construction astray.” (emphasis added)); Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”). Considering the claim language, the Oxford English Dictionary defines “form” as “[t]o construct, frame; to make, bring into existence, produce.”4 Thus, the plain meaning of the claim term to “form[] an adhesion layer on a back surface of a wafer” is “to construct or make an adhesion layer on a back surface of a wafer.” At this time, we do not perceive anything in the claim language that requires any specific method to construct an adhesion layer on a wafer surface. Thus, at least based on the claim language, we are not persuaded at this time that the challenged claims require adhering a pre-formed adhesion layer to a surface of a wafer, as Patent Owner contends. Citing the Specification of the ’879 patent, Patent Owner contends that the recited “adhesion layer” is “a pre-formed layer that is adhered” to the back surface of a wafer because the ’879 patent describes that the “[second semiconductor’s] back surface is adhered to the thermo-compression sheet 6.” Prelim. Resp. 12 (citing Ex. 1001, 6:48–52). The language cited by Patent Owner comes from the ’879 patent’s description of Figure 1, which shows “a semiconductor device in accordance with the first embodiment” of the ’879 patent. Ex. 1001, 5:34–36 (emphasis added), 6:37– 52. A particular embodiment appearing in the written description is generally not incorporated into a claim if the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citation omitted). Further, “it is improper to read limitations from a preferred embodiment described in the specification— slip op. at 31
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,352,879 - PTAB · May 15, 2023 · IPR2023-00072 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood that Micron would prevail on its asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“words” and because “the numerous (8) independent claims recite two very different interconnection techniques for stacked multichip modules.” Id. Petitioner represents that The current Petition challenges independent claims 1, 2, 23, 24, and 30 in addition to dependent claims 6-7, 9-10, 12-13, 14-19, 25-26, and 32—all of which recite a wire bond interconnection technique. The first Petition (IPR 2023-00071) seeks cancellation of independent claims 3, 27, and 31 in addition to dependent claims 4-5, 8, 11, 20-22, 28, 29, and 33—all of which recite using a combination of flip-chip and wire bond interconnection techniques for stacked multichip modules. Id. at 2–3. Petitioner further states that “each claim is challenged only once.” Id. at 3. Patent Owner does not dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)2 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Mr. Elenius, states that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical, mechanical or materials engineering and two to three years of experience in the design or development of semiconductor manufacturing, or the equivalent.” Ex. 2001 ¶ 32. Mr. Elenius further states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts that a person of ordinary skill in the art reading the ’806 patent would understand the claim term “electrode section” recited in the challenged claims to mean “electrical terminals, usually called bond pads, that are part of the substrate’s wiring layer.” Pet. 16–17 (citing Ex. 1002 ¶¶ 103–107). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “electrode section.” See generally Prelim. Resp. For purposes of this Decision, we need not construe the term “electrode section” because the parties do not identify any material issue that would turn on the construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). Patent Owner contends that the term “adhesion layer” recited in the challenged independent claims should be construed to mean “a pre-formed layer that is adhered.” Prelim. Resp. 13–15. Patent Owner argues that Ball, Fogal, and Mostafazadeh do not teach “adhesion layer” under Patent Owner’s proposed construction of the term. See, e.g., id. at 16–24. Although Patent Owner’s argument raises an issue of claim construction, we need not expressly construe “adhesion layer” for purposes of this Decision because, as discussed in Section III.D.5 below, Petitioner shows sufficiently that the asserted combination of Ball, Fogal, Mostafazadeh, and the knowledge of a skilled artisan teaches or suggests “adhesion layer” even under Patent Owner’s proposed claim construction. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham - PTAB · May 15, 2023 · IPR2023-00071 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 3–5, 8, 11, 20–22, 27, 28, 31, and 33 on all petition grounds, finding a reasonable likelihood of unpatentability under the asserted obviousness combinations.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims included in the ’806 patent. See Patent Trial and Appeal Board Consolidated Trial Practice Guide, 59–60 (Nov. 2019)3 (in determining whether multiple petitions are necessary, the Board may consider petitioner’s explanations regarding “the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Reply, and Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’806 patent, based on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Considering the claim language of claim 3 as a whole, see Hockerson- Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.”), we agree with Petitioner that claim 3 does not recite when or how the “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Patent Owner appears to argue that the “first semiconductor chip” with “an adhesion layer adhered to its back surface,” as recited in claim 3, must have been created “in advance,” e.g., by a wafer-level fabrication process, before the chip is mounted in the recited semiconductor device. Patent Owner argues that the patentee recognized that applying a paste or thermo-compression sheet on individual chips during packaging (i.e., mounting of the chips during packaging) caused the “overflow” and “gap” problems. Sur-reply 2 (citing Ex. 1001, 2:16–24, 2:44–46). According to Patent Owner, “the patentee further recognized that merely switching to a pre-formed solid sheet alone would not solve the problem” because using a thermo-compression sheet on an individual chip for mounting during packaging “results in the same problem as using an adhesive due to the inability to place the chip accurately on the thermo-compression sheet.” Id. at 2–3 (citing Ex. 1001, 2:49–56). Thus, Patent Owner argues the ’806 patent proposes a two-fold solution: “Use a preformed solid sheet and attach that sheet to the back surface of the wafer first” during the wafer fabrication process “before cutting and placing the chip” in a multichip package. Id. at 3 (underlined emphases added). Patent Owner asserts, therefore, “a first semiconductor chip having . . . an adhesion layer adhered to its back surface,” as recited in claim 3, must have a pre-formed adhesion layer adhered to its back surface “in advance” before mounting in a multichip package, such as a solid thermo-compression sheet applied to the backside of a wafer during wafer-level fabrication processing before the chips are produced by dicing. Prelim. Resp. 13–14; Sur-reply 2–3. We note, however, that claim 3 does not recite a “wafer,” placing “an adhesion layer on a back surface of a wafer,” or producing semiconductor chips by dicing or cutting the wafer. See Ex. 1001, 14:14–32. Nor does the claim recite any limitation indicating when or how an “adhesion layer” is “adhered to [the first semiconductor chip’s] back surface.” Thus, at least based on the claim language, claim 3 does not require the recited semiconductor chips with an adhesion layer to have been produced “in advance” before being used for mounting in the recited semiconductor device. Nonetheless, for purposes of this Decision, we need not and do not” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00631 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, and 15–23 under specified obviousness combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundTerm construed board ownDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. The statement on which Patent Owner relies is only part of a sentence; the full sentence reads as follows: In amended Claim 1, a trigger condition and associated threshold [are] selected by a user in a step prior to image capture, the image capture device then monitors a signal corresponding to the trigger condition so that the image capture device can automatically determine when an image should he captured without intervention by a user. Ex. 1015, 6 (emphasis added). The thrust of that sentence, as explained in the paragraph that follows it in the prosecution history, is that, in claim 1, “the timing of image capture[] is determined automatically by the image capture device without the involvement of the user.” Id. (emphasis added). The Beck reference is not distinguished by the applicant on the basis of how the threshold level is selected, but rather on how an image is captured “after a trigger condition and associated threshold ha[ve] been satisfied.” Id. As such, whether “a trigger condition and associated threshold” are selected by a user, or by the device itself, is not central to applicant’s argument distinguishing the Beck reference. Accordingly, the statement that “a trigger condition and associated threshold [are] selected by a user” does not evidence a clear intent to disavow claim scope, contrary to Patent Owner’s contention. For the reasons discussed above, we determine that the broadest slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In opposition, Patent Owner argues that Mishima fails to disclose entering a threshold level corresponding to the automatic trigger condition, because, as asserted by Dr. Bovik, “the user is not involved in setting the threshold in any way.” PO Resp. 31 (citing Ex. 2006 ¶ 72). As discussed above, however, the user does not need to be involved in setting the threshold level under our interpretation of “entering.” See supra Section II.A.4. That is, the term “entering” is not limited to acts of entering performed by a user, but encompasses acts of entering performed by the image capture device itself. See id. We determine that Petitioner has made a sufficient showing that Mishima discloses “entering a threshold level.” See PO Resp. 32. In particular, Petitioner has shown that, when the user sets Mishima’s device in the automatic mode and selects a reference image for comparison with a captured image or photographic subject, the device sets or selects a threshold level, such as Kn, P, or 40%, and, thus, satisfies the “entering a threshold level” requirement under our claim construction. See Pet. 13–15; Pet. Reply 13–15; Ex. 1002 ¶ 43; Ex. 1016 ¶¶ 13, 48–50; Ex. 1005 ¶ 40 (describing “setting a threshold value Kn” based on reference brightness value K0), ¶ 90 (setting or selecting “X < P” to determine a match, where P is a threshold value and X is the average square of differences between the part that is subject to recognition and the user-selected image pattern); ¶ 114 (describing setting a threshold level as “40%” of “the number of pixels that produce 1”). Moreover, we are not persuaded by Dr. Bovik’s testimony that “the user [in Mishima] is not involved in setting the threshold in any way.” See Ex. 2006 ¶ 72. Dr. Bovik does not address adequately Mishima’s disclosure that the user places the camera in the automatic imaging mode and selects a reference image6 for comparison with a captured image or photographic subject. See, e.g., Ex. 1005 ¶¶ 26, 37, 38, 83, 85, 87, 97, 98, 107, 108; see Pet. Reply 14 (citing Ex. 1005 ¶¶ 37, 83). Those acts satisfy “selecting an automatic image trigger condition.” See Pet. 14; Ex. 1002 ¶ 42. Dr. Bovik does not discuss whether those acts also satisfy “entering a threshold level corresponding to the automatic image trigger condition.” As such, Dr. Bovik’s analysis of Mishima is inconsistent with his” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In opposition, Patent Owner argues that a person of skill in the art would not have combined the teachings of Mishima and Misawa because: (1) the devices of Mishima and Misawa are not similar as Petitioner contends and, in fact, operate in fundamentally different ways, (2) the reasons Petitioner provides for combining Mishima and Misawa are undermined by the teachings of those references, and (3) Misawa would discourage one of ordinary skill from combining it with Mishima to arrive at the inventions of claims 3-6. PO Resp. 34. Patent Owner argues, for example, that Misawa “has nothing to do with automatic image trigger conditions, thresholds, or automatic image capture.” Id. at 35 (citing Ex. 2006 ¶ 91). We are persuaded by Petitioner, however, that Patent Owner’s argument is largely unresponsive to Petitioner’s asserted reason to combine, which “does not rely on Misawa for automatic image capture, but for an example user interface for creating an image database.” See Pet. Reply 15. We also are persuaded that a person of ordinary skill “would have looked to Misawa’s user interface as an example of how to construct/control image feature database 80 used in Mishima’s camera.” Id. at 16 (citing Ex 1005 ¶¶ 80, 94); see Ex. 1016 ¶¶ 53–55. Patent Owner has not persuaded us that using Misawa’s selection/extraction process in Mishima’s camera would have been outside the skill in the art, or yielded an unpredictable result. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Further, we are not persuaded by Patent Owner’s argument that Misawa would have led one in a divergent direction and, thus, teaches away from the recited method. See PO Resp. 44–45 (citing Ex. 2006 ¶¶ 108–111). Patent Owner has not shown that Misawa criticizes, discredits, or otherwise discourages investigation into the invention claimed. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009 (“A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.”) (emphases added; citation omitted). Patent Owner makes essentially the same arguments for claims 4–6 as” slip op. at 37
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Canon Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Aug 19, 2015 · IPR2014-00632 · APJ Richard E Rice · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 8, 11, 13–16, 19–21, and 24 as anticipated by Mishima; claims 3–7, 9, 10, 12, 15–18, 22, and 23 as obvious over specified combinations.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Patent Owner’s argument that we should limit “selecting” in claim 1 to “user . . . selecting” (PO Resp. 3) is not persuasive for the reasons that we provided in the Decision to Institute. Inst. Dec. 8–9. In addition, Patent Owner’s proposed claim construction would exclude embodiments in which the image capture device, itself, selects an automatic trigger condition. E.g., Ex. 1001, 10:28–32 (“The camera automatically enters the automatic response mode as soon as power is applied unless otherwise instructed by the operator. Alternately, configuration tools can be provided to select from various sensed conditions.”), 12:23–26 (“Once one or more subjects of interest have been stored, digital image capture device 10 can employ these subjects of interest as image capture triggers whenever it is placed in automatic response mode.”). Patent Owner has not explained sufficiently why “selecting” should be interpreted to exclude such embodiments. See, e.g., Oatey Co. v. IPS Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008) (holding that, at least where claims can be interpreted reasonably to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence to the contrary). For the above reasons, we determine that the term “selecting” carries its ordinary and customary meanings, and is not limited to acts performed by a user of the image capture device; and we maintain our interpretation.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“[D]isavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature.’” GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (quoting SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)). Applying that standard in this case, we are not persuaded that the prosecution history makes clear that claim 1 does not include “entering” of a threshold level by the image capture device itself. slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“7 Patent Owner does not dispute Petitioner’s definition of the level of skill in the art as “(1) a Bachelor’s degree in electronics, computer science, or a related discipline and 2-3 years of camera electronics design and implementation experience, or (2) a Master’s degree or higher in a field such as electronics, computer science, or a related discipline with some concentration in imaging systems or image processing.” PO Resp. 5 n.2 (citing Ex. 1002 ¶¶ 16–17; Ex. 2006 ¶¶ 25–27). We adopt that definition for purposes of this Final Written Decision. 8 Patent Owner does not contend in the Patent Owner Response that any secondary considerations are present that would render the challenged claims patentable over the combined teachings of these references.” slip op. at 35
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“electronic device.” See Pet. Reply 2 (citing Ex. 1016 ¶¶ 9–16). We credit Dr. Stevenson’s testimony on this point: Data entry in electronic devices occurs through a variety of different mechanisms. For instance, in the context of electronic devices, including digital cameras, “entering” of data encompasses the electronic input of data into a component of the electronic device, such as a processor or memory. An electronic device’s operating instructions may cause the device to input data into a processor or memory. The entered data may be data from another memory (e.g., read-only memory (“ROM”)), a removable memory card, or a network.” slip op. at 19
Patent outcomesUS 7,817,914 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,817,914 - Sure-Fire Electrical Corporation v. Yongjiang Yin And Shenzhen El Lighting Co. Ltd.Rehearing grantedPTAB · Jun 1, 2015 · IPR2014-01448 · APJ Debra K Stephens · IPR · Rehearing
Rehearing was granted for claims 1 and 7 under § 103 over He and Korodi, and denied for the He and Currie ground.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground. III. CONCLUSION For the foregoing reasons, on rehearing, based on our review of the record before us, we determine Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the combination of He and Korodi. Therefore, we modify our Decision to institute an inter partes review of claims 1 and 7 for obviousness over He and Korodi. We determine, however, that we did not abuse our discretion in declining to institute review on the asserted ground based on He and Currie, and rehearing is denied as to that ground. At this stage in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, including the claim construction.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Based on the record before us, we are persuaded Petitioner has shown a reasonable likelihood that an ordinarily skilled artisan would have been motivated to combine the teachings of He and Korodi. Specifically, we determine, based on the current record, Petitioner has articulated reasoning with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine the teachings. “‘[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’ . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We credit Dr. Horenstein’s testimony that an ordinarily skilled artisan would have found it obvious simply to replace the aluminum core wire in He with a power cord as taught by Korodi. Ex. 1008 ¶¶ 99, 102. We additionally are persuaded, on the record before us, that the combination of He and Korodi unites old elements with no change in their respective functions. See KSR, 550 U.S. at 415–16. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” Id. at 417. Indeed, we credit Dr. Horenstein’s testimony that replacing the aluminum core wire in He for the power cord in Korodi would have been a merger of familiar elements according to their established functions, known methods, and predictable results. Ex. 1008 ¶ 103. Accordingly, based on the record before us, we are persuaded the combination of He and Korodi is a proper combination.” slip op. at 10
- Burden
“With regard to the asserted ground of unpatentability of claims 1 and 7 for obviousness over He and Currie, Petitioner does not explain adequately the relative strengths or weaknesses of this ground and the grounds on which we have instituted. See Cisco Systems, Inc. v. Constellation Tech. LLC, Case IPR2014-01180, slip op. at 29–30 (PTAB Feb. 8, 2015) (Paper 8). The Currie reference has a filing date of September 24, 2004 and an issuance date of October 17, 2006. Thus, the Currie reference would not be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. See Prelim. Resp. 11. Accordingly, the arguments presented in Petitioner’s Request for Rehearing do not apply to the combination of He and Currie. Therefore, we conclude that we did not abuse our discretion in declining to institute an inter partes review based the combination of He and Currie. Accordingly, we do not institute an inter partes review based on this ground.” slip op. at 11
§ 103 obviousnesscites KSRPatents in suitUS 7,671,279
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.