• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 6, 2021 · IPR2020-01008 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–4 are unpatentable: claims 1, 2, and 4 are anticipated by Yanagawa, and claim 3 is obvious over Yanagawa and An.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

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

    “Based on the full record developed during trial, we see no reason to deviate from the preliminary interpretation adopted in the Decision on Institution, and incorporate our previous analysis herein. See Dec. on Inst. 24–30. We also note that the district court’s note for the jury is generally consistent with our preliminary interpretation, but has a different focus. The district court’s note focuses on where the channel forms relative to the gate our interpretation focuses on where the channel forms relative to the semiconductor substrate (i.e., “at the surface” of the semiconductor substrate). Claim 1 recites that each of the two surface-channel-type MOSFETs has a gate insulating film formed “on” the semiconductor substrate; thus, a channel that forms at the surface of the semiconductor substrate would be immediately below the gate insulating film. Further, dependent claim 2 recites relative dopant concentrations “in the channel region” of each surface-channel-type MOSFET. Given the pertinent extrinsic evidence cited in the Decision on Institution, particularly the Chen textbook, we are persuaded that the focus on where the channel forms relative to the recited semiconductor substrate is correct. We interpret “surface-channel-type MOSFET” to mean “a MOSFET in which the channel forms at the surface of the semiconductor substrate, rather than slightly under the surface,” and conclude that no other terms require express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Having reviewed all of the parties’ arguments and cited evidence, we agree with Petitioner. First, whether a transistor is surface-channel or buried-channel depends on the structure of the transistor rather than the mode or conditions under which it may operate at different times. Consistent with our interpretation based on Chen and other evidence, a transistor’s structure (e.g., the structure and doping of its channel region) defines where the channel between the source and drain regions will form when the transistor is ON. A buried-channel transistor is typically formed by doping the channel region with the same type of dopant as the source and drain regions, such that when ON, a channel forms below the surface of the semiconductor substrate, rather than at the surface. Chen explicitly states that it is “[t]he presence of [the] surface layer” with dopant of the same type as the source and drain regions that “changes normal MOSFET operation from surface-channel conduction to buried-channel conduction.” Ex. 1014, 29 (emphasis added), Figs. 2.17(a), 2.17(b). Chen states that the source and drain regions are connected “unless [the] layer is fully depleted by applying the appropriate gate voltage.” Id. at 29. But Chen never states that operating conditions of the MOSFET impact whether the device is surface-channel or buried-channel; rather, it is the “presence” of the surface layer in “normal” conditions that makes it buried-channel. Van der Tol similarly states that a “buried-channel MOSFET is typically realized” by implanting a surface layer of dopant of the same type as the source and drain regions. Ex. 1016, 1. And two textbooks include similar disclosures as well. BiCMOS Technology and Applications (A.R. Alvarez ed.) (1993) (Ex. 1043, “Alvarez”), describes “surface-channel” MOSFETs as “the case when the polysilicon gates are at 8. Alvarez then describes an alternative where “the PMOS channel [is] counterdoped to achieve [a] desired threshold . . . . This produces a buried-channel device.” Id. (emphasis added). Neil H. E. Weste & Kamran Eshraghian, Principles of CMOS VLSI Design: A Systems Perspective (1993) (Ex. 1045, “Weste”), similarly explains that adjusting the threshold voltage of a p-device “is done by introducing an additional negatively charged layer at the silicon/oxide interface. This moves the channel from the silicon/oxide interface further into the silicon, creating a ‘buried channel’ device.” Id. at 20 (emphasis added). Thus, the “normal,” or “typical[],” understanding of a person of ordinary skill in the art is that a transistor may be “change[d]” into a buried-channel transistor by doping the channel region to create a thin surface layer of the same type of dopant as the source and drain regions. See Ex. 1014, 29; Ex. 1016, 1. Doping in that manner causes the channel to form below the surface; absent such a change to the normal conditions, the transistor’s structure will cause channel formation at the surface. Yanagawa has no such doping that would make it a buried-channel transistor. See Pet. 19–20, 31–32; Ex. 1003 ¶¶ 63–64, 73, 91–93.” slip op. at 29

  Patent outcomesUS 6,445,047 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,445,047
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

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

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

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

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

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

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

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

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision

  Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16

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

    “Accordingly, we find that the record does not support construing” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81

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

    “144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043
• Veeam Software Corporation v. Hybir, Inc.All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01040 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Field; the Board did not reach the alternative Strong and Field ground.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “As we noted in the Institution Decision, Patent Owner’s Preliminary Response proposed a level of ordinary skill in the art that was very similar to Petitioner’s proposal. Inst. Dec. 15 (citing Prelim. Resp. 28). On the preliminary record at that time, we found both parties’ proposals consistent with the level of ordinary skill in the art reflected by the prior art of record. Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). And, on that record, we found that one of ordinary skill in the art at the time of the invention would have “a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” Id. at 16.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingNo construction neededDecided for petitioner

    “which states: “A method of synchronizing electronic data stored on a first client device with at least a second client device.” Ex. 1001, 19:8–9. Petitioner contends the preamble of claim 1 is not limiting because it states a purpose or intended use for the method recited and neither the term synchronizing nor the full preamble is referenced again in other claim elements. Pet. 10 (citing Arctic Cat Inc. v. GEP Power Prods, Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019)). In our Institution Decision, we preliminarily determined that the preamble of claim 1 does not limit the scope of the claim. See Inst. Dec. 18–19. Patent Owner does not contest that preliminary determination in its Response and confirmed at the oral hearing that it does not contend the preamble is limiting. See generally PO Resp.; Tr. 107:15– 16 (confirming that Patent Owner does not assert the preamble is limiting). Accordingly, for the reasons explained in our Institution Decision and because the parties agree, we maintain our preliminary determination and reaffirm that the preamble of claim 1 is not limiting, and, therefore, we need not expressly construe it.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “unclear. Nonetheless, we find that Field teaches receiving a first “inventory” for the reasons explained by Petitioner and based on our construction of “inventory” at least because Field receives an itemized list of electronic data in the form of one or more signatures. Thus, since Field teaches an “inventory,” we do not agree with Patent Owner that Field teaches away from an “inventory.” Additionally, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner, however, fails to identify, and we do not discern, any indication in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from following Field’s teachings or modifying Field as proposed by Petitioner. Further, to this latter point, we do not discern any specific argument by Patent Owner that one of ordinary skill in the art would not have been motivated to modify Field as Petitioner proposes, aside from Patent Owner’s assertions of teaching away.22 Considering the complete record before us, for the reasons explained above we find that Petitioner has established that Field teaches or suggests limitation 1A.1 and that one of ordinary skill in the art would have had a reason with rational underpinning to modify Field as proposed by Petitioner with a reasonable expectation of success.” slip op. at 54

  Patent outcomesUS 9,679,146 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,679,146
• Veeam Software Corporation v. Hybir, Inc.All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01039 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Field and Anderson; claim 5 over Field, Anderson, and Ackerman; and claim 11 over Field, Anderson, and Coombs.

  RulingsFinal written decision

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

    “Accordingly, we find that the complete record does not support” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “away and (2) whether one of ordinary skill in the art would have been motivated to modify Field in light of potential inefficiencies. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 69

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

    “Weighing the Graham Factors On balance, considering the complete record before us, Petitioner has established by a preponderance of the evidence that the combination of Field, Anderson, and Coombs would have rendered the subject matter of claim 11 of the ’545 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 99

  Patent outcomesUS 9,037,545 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,037,545
• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01009 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1 and 4–6 are unpatentable as obvious over Hidaka-based combinations; the Aoyama-based grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. Petitioner states that it assumes an effective filing date of August 7, 2002, for the ’320 patent, and argues that a person of ordinary skill in the art at that time would have had “a degree in electrical engineering, physics, materials science, or a similar discipline, along with 3–4 years of experience with the design and fabrication of MOS integrated circuits,” and would have been “aware of and generally knowledgeable about the structure and operation of DRAM” and “DRAM sense amplifiers, including their structure, operation, and physical layout.” Pet. 6, 39 (citing Ex. 1003 ¶¶ 34–37). Patent Owner “does not challenge” Petitioner’s proposed level of ordinary skill in the art. PO Resp. 13; see Ex. 2025 ¶ 31. Based on the full record developed during trial, including our review of the ’320 patent and the types of problems and solutions described in the ’320 patent and cited in the art and apply it for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not dispute that Hidaka and Takemura teach the above limitations of claim 1 or that a person of ordinary skill in the art would have been motivated to combine the references’ teachings in the manner asserted by Petitioner and would have had a reasonable expectation of success in doing so; therefore, any such arguments are waived. See Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1330 (Fed. Cir. 2017); NuVasive, 842 F.3d at 1380–81; Paper 11, 8 (“Patent Owner is cautioned that any arguments for patentability not raised in the response may be deemed waived.”). Petitioner’s analysis for each of the limitations, supported by the testimony of Dr. Bravman, which we credit, is persuasive. See Pet. 40, 42–53, 56–58; Ex. 1003 ¶¶ 178–181, 195–244, 263–278, 288–293.” slip op. at 22

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

    “Patent Owner in its Response argues that no express interpretation of any claim term is necessary. PO Resp. 14. Petitioner in its Reply makes various arguments regarding Patent Owner’s infringement contentions in the district court case, which we address below in Section II.D.4.b.(1), but does not propose a specific interpretation for any language in the claims. See Reply 4–7. Based on the full record developed during trial, we conclude that no terms require express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citations omitted)).” slip op. at 11

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

    “references in the record, and disagree with Patent Owner’s unsupported contention that Luk’s benefits are only realized by using a “bulk” substrate. See Ex. 1003 ¶¶ 248–255; Ex. 1031 ¶¶ 11–27; PO Resp. 38 (citing Ex. 2025 ¶ 140). For example, Luk expressly discloses the benefits of a reduced communication bottleneck between the memory and processor, elimination of “heavy capacitive loads,” lower power dissipation, higher speed operation, improved performance, and increased ability to modify and customize a desired layout. See, e.g., Ex. 1005, col. 1, ll. 16–37, col. 2, ll. 1–30 (disclosing that “logic processor(s) and DRAM memory [] integrated onto a single chip” is what “solves the processor/memory performance gap and bandwidth problems” of the prior art), col. 3, ll. 6–32 (disclosing that “integrating the processor and DRAM on the same chip” reduces power dissipation and improves performance); Ex. 1003 ¶ 252 (citing Ex. 1005, col. 2, ll. 18–30, col. 4, ll. 4–18). Luk never indicates that such benefits apply only when the DRAM and CMOS logic are implemented on a “bulk” substrate. Dr. Giapis also acknowledges that Luk’s stated benefits of DRAM-CMOS logic integration apply regardless of the type of substrate used. Ex. 1028, 112:21–117:3.” slip op. at 30

  Patent outcomesUS 6,747,320 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,747,320
• SAP SE v. Teradata US, Inc.Institution denied
  PTAB · Dec 1, 2021 · IPR2021-01017 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show the claimed file management context in non-persistent memory.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “institute an inter partes review if “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.” 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’419 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that a person of ordinary skill in the art at the time of the invention “would have possessed at least a Bachelor’s degree in computer science with at least two years of experience with database system development.” Pet. 14 (citing Ex. 1006 ¶¶ 21–22). Petitioner further contends that a person of ordinary skill in the art could have had “some combination of (1) more formal education and less technical experience, or (2) less formal education and more technical or professional experience.” Id. (citing Ex. 1006 ¶¶ 21–22). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound, we adopt Petitioner’s assessment of the level of ordinary skill in the art because it is consistent with the ’419 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner contends that no claim terms require explicit construction at this stage of the proceeding. Pet. 16. Patent Owner contends that in related district court litigation, Petitioner has proposed construing several terms in accordance with pre-AIA 35 U.S.C. § 112 ¶ 6, and Patent Owner faults Petitioner for not applying those constructions in the Petition. Prelim. Resp. 7–8. Based on the record before us, we need not construe any claim terms expressly to decide the issues presented at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “does not show sufficiently that the combination of System R and Lorie teaches a “file management context” stored in “non-persistent memory.” See Prelim. Resp. 16–22. As an initial matter, Petitioner asserts that the “Current Page Table and associated data structures such as free-space bit maps” comprise the claimed “file management context” in “non-persistent memory,” but Petitioner does not cite any passage in System R disclosing that the current page table (or any associated data structure) resides “in memory” rather than “on disk,” as shown in Petitioner’s annotated version of System R’s Figure 7. See Pet. 28–35. Nor does Petitioner point to any disclosure in Lorie in support of its contention that the current page table in the System R database system is stored in non-persistent memory. See id.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,904,419
• Micron Technology, Inc. v. Godo Kaisha IP Bridge 1All claims unpatentable
  PTAB · Dec 1, 2021 · IPR2020-01007 · APJ David C Mckone · IPR · Final written decision

  Claims 1–17 are unpatentable under § 103 over Kishii and Ryan; claims 13–14 are also unpatentable over Liang and El-Kareh.

  RulingsFinal written decision

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

    “In sum, the plain meaning of “memory storage portion” is consistent with Petitioner’s proposed construction (“the region where at least the components that are used for the storage of information are located,” Paper 11, 1 n.1). The Specification’s disclosure also is consistent with construing “memory storage portion” as a portion of a semiconductor device that stores information, as it repeatedly describes a capacitor (and not access circuitry) as storing information. Nothing in the Specification suggests that a “memory storage portion” must include circuitry beyond that for storing information, such as access circuitry. Although we have considered expert testimony from both parties, Dr. Kuhn’s testimony does not persuade us that access circuitry should be included in the construction and, in any case, that testimony is not persuasive enough to reach a construction inconsistent with the intrinsic evidence. See Phillips, 415 F.3d at 1318 (“[A] court should discount any expert testimony ‘that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent.’” (quoting Key Pharms. v. Hercon Lab. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998))). Accordingly, we maintain the construction from our Institution Decision and conclude that “‘memory storage portion’ refers to components that are used to store information, and need not include access circuitry.” Dec. 26.10” slip op. at 23

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “plus-function limitation under 35 U.S.C. § 112 ¶ 6.11 Pet. 18; PO Resp. 70– 71. “Section 112, ¶ 6 recites a mandatory procedure for interpreting the meaning of a means- or step-plus-function claim element. These claim limitations ‘shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.’” Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999) (quoting 35 U.S.C. § 112 ¶ 6); see also In re Donaldson Co., 16 F.3d 1189, 1193–94 (Fed. Cir. 1994) (en banc) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., 10 Patent Owner argues that the District Court in the Texas case adopted the construction of “memory storage portion” that Patent Owner proposes here, and that we should adopt that construction to promote consistency and reduce the potential for inconsistent results. PO Resp. 31; Sur-reply 27; Ex. 2023 (claim construction order), 2; Ex. 2026 (Markman hearing transcript), 73:14–79:23. We considered this argument in our Order denying Patent Owner’s Rehearing Request, noting that “the Texas court has not yet provided any opinion, reasoning, or explanation supporting th[at] construction[],” and that “we do not know the reasons why the Texas court construed the term[] in the manner it did, or what intrinsic or extrinsic evidence it found supported the construction[].” Paper 19, 10 n.4. We are not aware of any other explanation or reasoning provided by the Texas court subsequent to our Order. Thus, while we have considered the Texas court’s construction, we are still persuaded that Petitioner’s proposed construction is correct. 11 The AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f). Because the ’041 patent has an effective filing date before the effective date of the relevant provision of the AIA, we cite to pre-AIA § 112 ¶ 6. whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”). We construe such a limitation by determining what the claimed function is and identifying the structure or materials disclosed in the specification that correspond to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000).” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Bravman, contends that a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in physics, electrical engineering, materials science, or chemical engineering (or equivalent education in a related field), and at least two years of experience with integrated circuit processing, manufacturing, and structures.” Pet. 28–29 (citing Ex. 1003 ¶¶ 34–36). According to Petitioner and Dr. Bravman, a skilled artisan “would be aware of and generally knowledgeable about the structure and operation of DRAM, including the various layers of material used.” Id. at 29. Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt Petitioner’s proposed level of skill.” slip op. at 29

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “also ‘needed’ for writing and reading information in a cell,” pointing to features such as write driver circuits, input/output circuits, and circuitry for opening rows. Reply 9–11 (citing Ex. 1029 ¶¶ 19–22; Ex. 2003 (“Baker”), 30–318). According to Petitioner, Patent Owner “arbitrarily defines ‘memory storage portion’ to include only some, but not all, of the ‘needed’ circuitry.” Id. at 10. We agree with Petitioner. There is no dispute that a complex electronic device such as a DRAM memory would not operate with a capacitor alone; other circuitry is needed to make it work. An access transistor is an example of such circuitry in a typical DRAM. We credit Dr. Bravman’s testimony that additional circuitry beyond an access transistor would be needed as well. Ex. 1029 ¶¶ 19–22.” slip op. at 20

  Patent outcomesUS 6,424,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,424,041
• Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentable
  PTAB · Nov 22, 2021 · IPR2021-00449 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Yang and Lynch because the combination teaches the claimed elements and increased headroom supplied a reason to combine with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10

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

    “centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11

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

    “applicant acted as a lexicographer as to the term “stretching.” We determine that the Specification supports an understanding of the plain and ordinary meaning as extending or spreading out rather than as “make taut” or in “tension.” As argued by Petitioner, “[t]here is no description requiring that a roof be made taut or placed under tension” and, “[t]o the contrary, the specification consistently uses the word ‘stretch’ to describe extending or spreading out.” Pet. Reply 11. For example, in the eleven instances the Specification uses some form of the word “stretch” (aside from in claim 1), six instances relate to “stretching” the frame (or some component of the frame), rather than the roof. See, e.g., Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)), 3:15–19 (“When it is necessary to pitch the tent, the four side poles 10 are pushed outwardly at the same time, thus stretching the tent frame. When the side poles 10 are pushed outwardly as described above, the sliders 70 move upward along the side poles 10 while stretching the two 14 Under the same logic, Patent Owner’s construction of “stretching” as “make taut” should be rejected because it would render superfluous the “sustaining” requirement in that any “center pole” that makes taut a tent’s roof would also sustain it. Cf. PO Sur-reply 5. types of ribs 20 and 30.” (emphasis added)), 3:23–24 (discussing how “the center pole ribs 30 are fully stretched by the support links 40” (emphasis added)), 3:29–30 (discussing “[w]hen the tent is pitched with the frame being fully stretched as described above” (emphasis added)), 4:12–14 (“When the frame is stretched so as to pitch a tent, the center pole is fully moved upwardly along with the center pole ribs.” (emphasis added)). These instances do not align with Patent Owner’s proposed construction of “stretching” as in “tension” or “make taut.” We find particularly supportive of the above-determined construction that in one of those six instances, the Specification directly contrasts—using a disjunctive “or”—“stretchable” with “collapsible.” See Ex. 1001, 3:4–6 (discussing how “the collapsible tent frame of this invention is easily and quickly stretchable or collapsible, thus allowing a user to easily and quickly pitch or strike a tent” (emphasis added)).” slip op. at 15

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

    “On the full record developed at trial, we determine that the increased total ceiling height—i.e., “headroom” as used in the Petition—provides adequate “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” based on the proposed modification. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, the unmodified version of Yang is most similar to the middle example in Petitioner’s graphic above, as it has no structure underneath the tent roof (as roof support bars 7 and groove joints 6 are essentially at the height of the canopy itself). Compare Pet. Reply 20, with Ex. 1004, Fig. 4. The modified device—Yang modified with apex portion 50 of Lynch—is most similar to the rightmost example in Petitioner’s graphic, as the height of the canopy has been increased at least somewhat as compared to the middle example. See Pet. Reply 20; see also PO Resp. 24 (acknowledging that the proposed modification would “increase the height of the roof (the ceiling height)”). The record supports that this increased total ceiling height—even if only for certain locations where a person might stand—would have motivated one of ordinary skill in the art to modify Yang based on Lynch as proposed. This determination is supported by the testimony of Dr. Klopp, who states that “[i]ncreased headroom in some places under a tent is desirable for stationary users, especially for users of above average height.” Klopp Reply Decl. ¶ 113, cited at Pet. Reply 19.” slip op. at 45

  Patent outcomesUS 5,944,040 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,944,040
• Walmart Inc. / Z-Shade Co., Ltd. et al. v. Caravan Canopy International, Inc.All claims unpatentable
  PTAB · Nov 22, 2021 · IPR2020-01026 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Yang and Lynch; the Board did not reach the alternative grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We determine that one of ordinary skill in the art at the time of the invention of the ’040 patent would have had (1) a bachelor’s degree in the mechanical arts, including but not limited to mechanical engineering and industrial design, (2) at least two years of experience in the design or analysis of mechanical devices, fabricated frames, and/or kinematic linkages, and (3) at least a basic understanding of ergonomics. As to part (1), although the parties outline generally similar requirements as to formal schooling, Patent Owner’s proposal provides enhanced clarity as to the identity of the related disciplines, which we view as supported by the record. See, e.g., Klopp Pet. Decl. ¶ 1, Ex. A; Rake Decl. ¶¶ 4, 7–9, 19. As to part (2), the parties again outline similar requirements as to work experience, but Petitioner’s proposal provides added detail on experience in relevant design features, which we view as supported by the record. See Exs. 1004–1007. As to part (3), given the nature of the technology at issue, we view a basic understanding of ergonomics as relevant to one of ordinary skill in the art. See, e.g., Ex. 1001, 3:12–49 (discussing operation of the invention by a person); Rake Decl. ¶ 31, cited at PO Resp. 4. This is the same level of ordinary skill adopted in the Decision on Institution. See Dec. Inst. 32–34.” slip op. at 10

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

    “1. “Center Pole” Petitioner proposes to construe “center pole” in element 1A as a “centrally-disposed, long, slender object.” Pet. 28–32. Patent Owner responds that the District Court rejected this proposal and held that the phrase should be given its “plain and ordinary meaning.” PO Resp. 5–6; see also Ex. 1018 at 6–10 (the District Court declining to construe “center pole”). We do not discern a need to construe explicitly this phrase because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Under the claim construction standard applied in this proceeding, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)). For the reasons below, we view the plain and ordinary meaning of “stretching” on the complete record here as extending or spreading out, in line with portions of Petitioner’s proposed construction.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “the context of its own invention, “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame,” it is important to note that the Figure 3 embodiment in Lynch includes Velcro fasteners 35 that secure side panel 18 of canopy covering 12 to corner support member 22. See id. at 6:60–64 (“As is shown in phantom in FIG. 3, canopy covering 12 has a side panel 18 which is additionally secured to a top portion of corner support member 22 by means of corresponding hook and loop fasteners, such as Velcro fasteners 35.”). The issue here is whether the “center pole” in the context of the modified device (which does not include Velcro fasteners configured as in Lynch) is “constructed for stretching and sustaining a tent’s roof when a tent is pitched with the tent frame.”20 We determine that Petitioner has demonstrated that this requirement would be satisfied in the context of the modified device, even without Velcro fasteners. We first address whether the “center pole” in the modified device is “constructed for . . . sustaining a tent’s roof when a tent is pitched with the tent frame.” Petitioner states that after modifying roof bearing beam 8 in Yang to include apex portion 50 from Lynch, the “center pole” would “heighten and hold up the fabric tent roof” from Yang. Pet. 40 (citing Klopp Pet. Decl. ¶¶ 74–79). According to Petitioner, the proposed modification “would further push up the tent’s rooftop ‘to increase space for activities’ as well as creating more tension in the rooftop to reduce the risk of the rooftop ‘collapsing, bending, or leaking rainwater when raining.’” Id. (citing Ex. 1004 at 6–7; Klopp Pet. Decl. ¶¶ 77–79). We agree that the apex of the roof in Yang as modified by Lynch’s teachings would be higher than the 20 In the Reply, Petitioner seeks to rely on Lynch’s disclosure of using Velcro to attach the roof to the tent frame. See Pet. Reply 17 (bottom paragraph). As argued by Patent Owner, this is a new argument provided for the first time in reply. See PO Sur-reply 12–13; see also Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“We see no error in the Board’s rejection of [a petitioner’s] reliance, in its Reply submissions, on previously unidentified portions of a prior-art reference to make a meaningfully distinct contention.”); Consolidated Trial Practice Guide 73 (Nov. 2019), https://www.uspto.gov/TrialPracticeGuide Consolidated (“TPG”) (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”). We do not consider Velcro fasteners as part of the modified device.” slip op. at 36

  Patent outcomesUS 5,944,040 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 5,944,040

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.