• Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentable
  PTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would 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); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7

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

    “On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15

  Patent outcomesUS 11,041,087 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,041,087
• Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentable
  PTAB · Apr 11, 2025 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Remand

  On remand, the Board held claim 12 unpatentable over Grotmol and Hickman and denied the motion to amend because proposed substitute claims 21–29 were unpatentable.

  RulingsRemand decision

  • RemandOther

    “Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Written Decision regarding the level of ordinary skill in the art. See generally DR Req. Upon consideration of the full record including the arguments in Patent Owner’s Request for Director Review, we maintain that determination here. More specifically, considering the subject matter of the ’344 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. See 2024 Final Dec. 10–11. Accordingly, with that exception, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13

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

    “the differences as compared to claim 1, including those findings and determinations set forth in a section of the 2024 Final Written Decision titled “Overview—Claims 6, 11, and 12” (id. at 65–67) and in the sections titled “Claim 12” and “Conclusion—Claims 6, 11, and 12” (id. at 83–86). Further, based on the complete record now before us, including Patent Owner’s Request for Director Review, for the reasons given in our 2024 Final Written Decision and our additional reasons given herein, we determine that Petitioner has shown by a preponderance of the evidence that the Grotmol and Hickman combination teaches the limitations of claim 12.” slip op. at 24

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Director Review and remanding for further proceedings. Paper 49 (“Acting Director’s Decision” or “DR Dec.”). That Decision states agreement “that the Board’s analysis of claim 12 did not make separate factual findings.” DR Dec. 2. The Decision instructs us on remand “to consider Patent Owner’s arguments as to claim 12 and as to proposed substitute claim 21” and “[r]egardless of the Board’s disposition on remand, the Board should explain more fully its findings as to claim 12 and proposed substitute claim 21.” Id.” slip op. at 3

  Patent outcomesUS 11,238,344 unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,238,344
• Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentable
  PTAB · Jan 3, 2025 · IPR2023-01173 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 10, 11, 25, 27, and 30 are unpatentable under § 103 over Grotmol, Grotmol and Hickman, or Grotmol and Hoffman.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 5; PO Resp. 9. We determine that no claim terms require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability. See Sections II.D–II.F.” slip op. at 6

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Patent Owner’s arguments are unavailing. Grotmol teaches that a user may train a robot to learn “simple” and “complex” tasks. Ex. 1005, 24:17– 23. The evidence of record indicates that a person of ordinary skill in the art would have known to use different trainers “to train behaviors involving different levels of complexity in order to take advantage of the varying skills and knowledge of trainers.” Ex. 1003 ¶ 341. Thus, based on Grotmol’s teaching that a robot can learn both simple and complex tasks, a person of ordinary skill in the art would have had a specific reason for different users to train Grotmol’s robot for different behaviors, namely, to benefit from the users’ varying skills and knowledge. Pet. 25; Ex. 1003 ¶ 341; Ex. 1005, 24:17–23. Grotmol also teaches that a user may train a robot “using a gamepad (or other input device . . . ).” Ex. 1005, 26:9–13; see id. at 33:18–21. The evidence of record indicates that “switching users would be as simple as handing off a gamepad or other remote device used for controlling the robot from one user to another.” Ex. 1010 ¶ 73. Neither Patent Owner nor its declarant, Dr. Eli Saber, explains specifically why handing Grotmol’s gamepad to a different user would have created “complexities of combining the mixed knowledge into a single knowledgebase” or required “identifying each user to store particular learned operations and preferences in portions of the knowledgebase for user-specific autonomous operations.” See PO Resp. 14–15; PO Sur-reply 9; Ex. 2007 ¶¶ 128–130. Thus, based on Grotmol’s teaching of using a gamepad to train a robot, it would have been simple and straightforward for different users to train Grotmol’s robot for different behaviors. Ex. 1005, 26:9–13, 33:18–21; Ex. 1010 ¶ 73.” slip op. at 12

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

    “4. Reason to Combine Petitioner asserts that a person of ordinary skill in the art would have had reason to combine the cited teachings of Grotmol and Hickman. Pet. 27–30 (citing Ex. 1003 ¶¶ 159–166). We agree with Petitioner’s rationale. Specifically, it would have been obvious to a person of ordinary skill in the art to combine Grotmol and Hickman so that Grotmol’s robots share training sets using Hickman’s shared robot knowledgebase. Id. at 30; Ex. 1003 ¶ 166. Doing so would have been obvious because Grotmol teaches sharing training sets between robots, and Hickman’s shared robot knowledgebase would facilitate wider and faster sharing of Grotmol’s training sets. Pet. 27–29; Ex. 1003 ¶¶ 160–161, 164; Ex. 1005, 33:27–32; Ex. 1007, 1:38–41, 5:41–46, 11:31–41. In addition, a person of ordinary skill in the art would have had a reasonable expectation of success in using Hickman’s shared robot knowledgebase with Grotmol’s robot because Hickman’s shared robot knowledgebase would “not interfere” with Grotmol’s robot. Pet. 30; Ex. 1003 ¶ 166.” slip op. at 24

  Patent outcomesUS 11,055,583 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 11,055,583
• Tesla, Inc. v. Autonomous Devices, LLCAll claims unpatentable
  PTAB · Dec 12, 2024 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 3, 6–8, and 10–18 are unpatentable; cancellation of claims 4, 5, and 9 is granted, and proposed substitute claims 21–29 are unpatentable.

  RulingsFinal written decision

  • Expert testimonyOther

    “Accordingly, we maintain our determination at the institution stage” slip op. at 11

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

    “f) Conclusion—Proposed Substitute Claim 21 For the reasons given, we determine that Petitioner demonstrates by a” slip op. at 111

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

    “g) Conclusion—Disclaimed Claim 1 For the reasons given above and the reasons presented by Petitioner,” slip op. at 25

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

    “4. Claim 6 Claim 6 depends from claim 3 and recites the following:” slip op. at 73

  Patent outcomesUS 11,238,344 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,238,344
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00071 · APJ Julia Heaney · IPR · Final written decision

  Claims 3–5, 8, 11, 20–22, 27–29, 31, and 33 are unpatentable as obvious over the stated combinations of prior art and skilled-artisan knowledge.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.” Our analysis begins with the claim language. The term “adhesion layer” appears in each of the ’806 patent’s independent claims, which include both method and device claims. See, e.g., Ex. 1001, 13:44–63 (claim 1 directed to a “semiconductor device”); id. at 17:58–18:17 (claim 30 directed to a “method of manufacturing a semiconductor device”). Claim 1 recites “a first semiconductor chip having a first adhesion layer adhered to its back surface” and “a second semiconductor chip having a second adhesion layer adhered to its back surface.” Id. at 13:49–51, 13:54–56 (emphasis added). Claim 30 recites the steps of “forming a first insulating adhesion layer on a back surface of a first wafer” and “forming a second insulating adhesion layer on a back surface of a second wafer.” Id. at 17:60–62, 18:3–5 (emphases added). In the absence of contrary evidence, we must assume that the term “adhesion layer” has the same meaning in all claims of the ’806 patent. In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“the principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in different claims,” quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed. Cir. 2001)). The language of claim 30 and similarly worded claims of the ’806 patent suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer and need not be pre-formed, as argued by Patent Owner. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of claims 30 and 31 does not support Patent Owner’s construction that the “adhesion layer” must be a pre-formed layer that is adhered. Cf. PO Resp. 22–25 (arguing for that construction).” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Citing testimony from Dr. Suhling, Petitioner asserts that a person of ordinary skill in the art at the priority date of the ’806 patent would have had i) a bachelor-level degree in electrical engineering, mechanical engineering, material science, or a related subject and five or more years of experience working in the field of semiconductor packaging; ii) a Master’s-level degree in mechanical engineering, electrical engineering, material science, or a related field, and at least 1-3 years of experience in the design/development of semiconductor packages; or iii) a Ph.D.- level degree in mechanical engineering, material science, electrical engineering, or a related field, and at least some experience in the area of semiconductor packaging. Pet. 17–18 (citing Ex. 1002 ¶¶ 28–32). Petitioner further states that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 18. 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. 2014 ¶ 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. For purposes of this Decision, we find no meaningful differences” slip op. at 14

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

    “3. Reasons to Combine Petitioner contends that it would have been obvious for a person of ordinary skill in the art to combine Ball’s teachings of stacking chips with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 28–29. Petitioner contends that a person of ordinary skill would have been motivated to combine the teachings of Ball and Mostafazadeh for several reasons, including to provide a more efficient manufacturing process for multichip modules and to simplify the stacking process. Pet. 28–31. Patent Owner argues that a person of ordinary skill would not have been motivated to combine Mostafazadeh with Ball because there would have been no reasonable expectation of success and the combination would not have resulted in a functioning semiconductor device. PO Resp. 39. Patent Owner asserts that Petitioner’s combination of Ball and Mostafazadeh would fail for multiple reasons and that Mostafazadeh does not describe multi-chip stacked mounting. Id. at 39–52. Having considered the evidence and arguments, we determine that the preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module with Mostafazadeh’s process for applying adhesive at the wafer stage and then dicing to create individual chips with adhesive backsides. Pet. 28–31. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s combination. Ball teaches a stacked multichip module using flip-chip and wire bond interconnections, where a lower chip is flip-chip connected to a substrate using metal bumps, and an upper chip is wire bond connected to the substrate. Ex. 1005, Abstract, 3:42–64, 4:58–59, 5:3–12, 5:18–20, 5:23– 27, Fig. 1. Ball teaches that the upper chip is attached to the lower chip in a back-to-back arrangement with a layer of adhesive applied over a back side of the lower chip. Id. Mostafazadeh teaches a method for applying integrated circuit dies to support surfaces. Ex. 1003, Abstract. In Mostafazadeh’s method, an adhesive coating is formed on a surface of a semiconductor wafer, the adhesive coating is dried, and the semiconductor wafer is diced to form integrated circuit dies, each having an adhesive layer on its mounting surface, i.e., its back surface. Id. at 3:5–11, 5:20–25, 7:9–11, 7:29–8:2, Fig. 2 (steps 104–110). A selected die is then attached to an associated support surface by placing the adhesive layer of the selected die in contact with the associated support surface. Id. at 3:11–13, 8:10–12, Fig. 2 (steps 112–118).” slip op. at 33

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

    “After considering the parties’ arguments and evidence, we determine that Petitioner meets its burden of proof for claim element [3d]. Our finding is supported by Figure 1 of Ball, which depicts a second chip mounted to a first chip in a back-to-back arrangement. Ex. 1002 ¶ 158; Ex. 1005, Fig. 1. More particularly, Ball’s Figure 1 shows that back side 32 of upper die 12 (the claimed “second semiconductor chip”) is mounted to back side 30 of lower die 14 (the claimed “first semiconductor chip”) by adhesion layer 28. Ex. 1005, 5:18–20. Relying on Dr. Suhling’s testimony, Petitioner shows persuasively that “a circuit is formed on the front surface 34 of upper die 12 . . . , as evidenced by bonding pads 36 and wires 38 connecting the upper die’s circuitry to the wiring layer on substrate 16.” Pet. 41; Ex. 1002 ¶ 159. We credit Dr. Suhling’s unrebutted testimony that, “[b]ecause the circuitry is on the front side of upper die 12, a [person of ordinary skill in the art] would know that the back surface adhesive layer is ‘where a circuit is not formed.’” Ex. 1002 ¶ 159. Patent Owner argues that, to meet claim elements [3b] and [3d], “a reference must show that an adhesion layer extends to cover the entire back surface of the second semiconductor chip where a circuit is not formed.” PO Resp. 30. We find no support in the claim language or other intrinsic evidence for Patent Owner’s argument. In our view, the phrase “back surface where a circuit is not formed” identifies the back side of the chip as opposed to the front side, where a circuit is formed. Ex. 1001, 14:26–27 (claim element [3d]). Our interpretation is supported by the claim language as a whole. Claim element [3b], for example, recites “a first semiconductor chip having a circuit forming on its front surface and an adhesion layer adhered to its back surface.” Id. at 14:17–19 (emphasis added). In this” slip op. at 47

  Patent outcomesUS RE38,806 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision

  Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.

  RulingsFinal written decision

  • 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 find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, 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)Term construed petitioner constructionGranted

    “On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16

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

    “Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46

  • ExcludeOther

    “We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72

  Patent outcomesUS RE38,806 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
• Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00073 · APJ Sheldon M Mcgee · IPR · Final written decision

  Claims 1–15 are unpatentable under §103: the Board found the asserted combinations taught the limitations, with motivation to combine and a reasonable expectation of success.

  RulingsFinal written decision

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

    “The claim language, “forming” an “adhesion layer on a back surface,” suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of the claims of the ʼ879 patent does not support Patent Owner’s construction that the “adhesion layer” must be a preformed layer that is adhered. Cf. PO Resp. 21–23 (arguing for that construction).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, 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

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Mostafazadeh, could overflow.” PO Resp. 41, 42 (citing Ex. 2014 ¶ 121). According to Patent Owner, the downward pressure during mounting “could cause adhesive to squeeze out.” Id. at 41. We find that Patent Owner’s argument and the corresponding testimony of Mr. Elenius are speculative and do not outweigh Petitioner’s evidence of obviousness. The overflow issue was recognized and addressed by Mostafazadeh. Contrary to Patent Owner’s argument, Mostafazadeh provides explicitly that its adhesive layer “covers an entire mounting surface 190 of the selected integrated circuit dies 182 and does not extend beyond a boundary of the mounting surface 190.” Ex. 1003, 10:6–9 (emphasis added). Additionally, Mostafazadeh teaches that when “the adhesive layer is rolled on, it is exactly the same size as the mounting surface and is quite even. Thus, when the die is attached to its supporting surface the adhesive does not extend beyond the mounting surface of the die.” Id. at 9:15–18. Further, Mostafazadeh teaches that its process avoids the adhesive jutting around the edges of the die. Id. at 2:26–28. These teachings support that a person of ordinary skill in the art would have had a reasonable expectation of successfully applying Mostafazadeh’s die attachment method to Ball’s multichip device while avoiding adhesive overflow. Next, Patent Owner argues that Petitioner’s combination would fail” slip op. at 40

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

    “preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module using flip-chip and wire bond connections with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 25–28. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s” slip op. at 33

  Patent outcomesUS 6,352,879 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,352,879
• Google LLC v. Nobots LLCAll claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 3–9, 11, and 13–20 are unpatentable under §103 over the asserted prior-art combinations; claims 1, 2, 10, and 12 were disclaimed.

  RulingsFinal written decision

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

    “d) Analysis Having considered the parties’ respective positions, we conclude that Petitioner’s view as to meaning of “not denying access” is more consistent with the ’885 patent, and the record at hand, than Patent Owner’s view. In that respect, we agree that “not denying access” is “broader” than “granting access” and encompasses other possible acts in which access is not denied,” slip op. at 13

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

    “We determine that it is unnecessary to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 15–16. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground. Inst. Dec. 18–19.” slip op. at 39

  Patent outcomesUS 10,423,885 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,423,885
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.All claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00585 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–33 are unpatentable as obvious: claims 1–3, 12–14, and 23–25 over Lau; claims 1–10, 12–21, and 23–32 over Lau and Buford; and claims 1, 2, 11–13, 22–24, and 33 over Ainsworth.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityOther

    “FedEx filed a motion to terminate the proceeding on the ground that Qualcomm had failed to accurately identify all real parties in interest. Paper 58. We separately denied that motion (Paper 72), and this decision does not further address the issues raised in that motion.” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “Relying on Dr. Olivier’s testimony, Qualcomm argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least two years of experience in design, development and/or testing of hardware and software used in sensor-based networks for monitoring items, or the equivalent.” Pet. 8 (citing Ex. 1003 ¶ 23).6 Qualcomm also contends that “additional education [may] substitute[e] for experience and vice versa.” Pet. 9 (citing Ex. 1003 ¶ 23). FedEx and Dr. Mahon essentially agree with Qualcomm’s articulation of the level of ordinary skill as expressed above. See PO Resp. 30 n.2; Ex. 2201 ¶ 47. Because Qualcomm’s uncontroverted articulation of the level of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 8. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Mahon agrees. Ex. 2201 ¶ 47. ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’797 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:21–2:29 (“Technical Field” and “Background” sections of the ’797 patent, describing background knowledge about methods for tracking packages using sensor devices including radio frequency identification (RFID) systems).” slip op. at 7

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

    “We agree with Qualcomm’s interpretation of the prosecution history. Although Zhou teaches collecting only a subset of sensor data that it could have collected, it reports all data it collects. Thus, the evidence does not suggest that Zhou discloses or teaches “reporting the received sensor information to the party at a level of specificity that is less than the level of specificity of sensor information collected by a sensor.” Ex. 1001, 25:13–16. Thus, the applicant’s amendment distinguished Zhou for reasons other than what FedEx suggests, and the prosecution history does not suggest that a person of ordinary skill in the art would have understood the phrase “reporting . . . at a level of specificity” to exclude reporting a specific subset of the collected information.” slip op. at 11

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

    “Having considered the arguments and evidence of record, we find more persuasive Qualcomm’s argument that its proposed, relatively minor modification of Lau—which simply involves incorporating Buford’s validator 401 and rule maker 304 as part of Lau’s tracking server 114 and tracking database 116—would not fundamentally change Lau’s system. We agree that the access-control concepts on which Qualcomm relies from Buford would be generally applicable in both push and pull architectures. And such a modification would have been within the ordinary skill in the art at the time of the claimed invention. FedEx also argues that Qualcomm has failed to assert a sufficient obviousness rationale because it “does not articulate what Lau lacks that Buford adds.” PO Resp. 56 (citing Ex. 2201 ¶¶ 151–154; Nokia of Am. Corp. v. Oyster Optics, LLC, IPR2017-02146, Paper 40 at 46–47, 49 (PTAB Feb. 13, 2019); Cisco Sys., Inc. v K.Mizra LLC, IPR2021-00593, Paper 41 at 34 (PTAB Sept. 19, 2022); Apple Inc. v. Masimo Corp., IPR2020-01524, Paper 29 at 47 (PTAB Apr. 29, 2022). We disagree that Qualcomm is required to make such a showing. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). For the above reasons, we find persuasive Qualcomm’s argument that” slip op. at 22

  Patent outcomesUS 8,766,797 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,766,797
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.All claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00584 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–25 are unpatentable: claims 1–5, 7–19, and 21–25 as obvious over Hashimoto and Bhuptani; claims 6, 12, 20, and 24 with Lindsay; and claim 14 with Lareau.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “findings herein. When we use the phrase evidence of record or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of Patent Owner’s Motion to Exclude, that is Exhibits 1012, 1013, and 1026 through 1031. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1012, 1013, and 1026 through 1031 is dismissed as moot.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art the time of” slip op. at 11

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

    “type of supply chain tracking does not render Bhuptani’s teachings unnecessary, as Patent Owner argues. Even to the extent Hashimoto’s technology is simple and Bhuptani’s technology is complex, that different types of supply chain tracking offer different advantages or disadvantages does not preclude a conclusion of obviousness. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (noting that “case law does not require that a particular combination must be the preferred, or the most desirable,” slip op. at 44

  Patent outcomesUS 7,623,033 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,623,033

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.