• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] 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). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires 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.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and 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 10

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

    “Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10

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

    “That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · Nov 25, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Shi does not disclose the claimed low-light high-pass parameter required by the asserted obviousness grounds.

  RulingsFinal written decision

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

    “Given the teachings of the specification, we agree with Patent Owner that a low-light high-pass parameter is a parameter of a smoothing function that favors high frequencies (high pass) when exposure times are long (low light). See Tr. 42:10–18 (Patent Owner’s counsel stating that “high-pass” means “there’s a bias or preference for high frequencies”); Ex. 2020, 93:23– 94:15 (Petitioner’s declarant, Dr. Katsaggelos, agreeing that a high-pass system attenuates the low frequency of a signal). Although we acknowledge Petitioner’s position that the specification provides other ways or considerations in implementing a smoothing function, based on our above analysis of the specification, we find that the specification describes the lowlight high-pass parameter as a specific component of a smoothing function. See, e.g., Ex. 1001, 21:17–25 (setting out several parameters besides the low-light high-pass parameter used in trajectory smoothing).” slip op. at 10

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

    “position and a real device position. Id. at 18:27–40. In other words, the blur is addressed by analyzing the image to identify motion and then shifting the image. Shi, however, does not disclose how its parameter is based on low light (or the long exposure times indicative of low light). In its Petition, Petitioner asserts that a person of ordinary skill in the art would understand that “blurs can be caused by low light conditions.” Pet. 28 (citing Ex. 1003 ¶ 111). Although this is true, that does not mean that Shi’s blurs are identified by a parameter that considers low light. As we just described, Shi identifies the blur by quantifying the amount of motion of the points in an image, not by identifying low light. This is simply a different way to determine the presence of motion blur. In Shi, blur is measured, whereas in the ’840 patent, it is inferred based on low-light conditions (e.g., by observing the exposure time). See, e.g., Ex. 1007, 18:7– 26; Ex. 1001, 19:12–26. In its Reply, Petitioner does not point to any further disclosures. Accordingly, we find that Shi does not disclose the “low-light” aspect of the claimed low-light high-pass parameter. This is sufficient to determine that Petitioner’s ground does not meet all claim limitations. Similarly, we find that Shi does not disclose the “high-pass” aspect of the parameter. Shi’s blur compensation uses a spherical interpolation to modify the image. Ex. 1007, 18:27–40. The low-light high-pass parameter, as we have construed the term, allows more high frequencies. To allow more high frequencies, this necessarily means either allowing fewer low frequencies, or allowing more high frequences as opposed to some counterfactual situation in which fewer high frequencies were going to be allowed. See Ex. 2020, 94:23–95:15; Ex. 2022. We are directed to no persuasive evidence from Petitioner that Shi’s spherical interpolation favors high frequencies over low frequencies. Accord Ex. 2018 ¶ 107 (Patent Owner’s expert stating that Shi’s spherical interpolation “reintroduce[es] both high- and low-frequency motion”). Even if Shi allows the viewing window to track the camera position “consistent with the natural blur in the image” (Ex. 1007, 17:63–67), we are not provided with sufficient evidence to conclude by a preponderance of the evidence that providing a similar visual goal as a high-pass parameter (Ex. 1001, 22:16–18, “the output motion may include high frequencies that mask motion blur”) is the same as having a high-pass parameter. Again, merely preserving high frequencies is not the same as having a “high-pass parameter” because, as construed, a “high-pass parameter” also involves some degree of attenuation of low frequencies or relative increase of high frequencies. Accordingly, we find that Shi does not disclose the “high-pass” aspect of the claimed low-light high-pass parameter.” slip op. at 18

  Patent outcomesUS 10,958,840 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentable
  PTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand

  Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34

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

    “Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38

  Patent outcomesUS 10,647,861 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,647,861
• Visa, Inc. v. Cortex MCP, Inc.No claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Petition did not establish the claimed second OVER file over Oborne or a sufficient basis to combine Stafford and Purves.

  RulingsFinal written decision

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

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 9–13 (referring to the ’854 patent Specification, the language of claim 1, and Dr. Shamos’s testimony). However, we did not determine whether an “OVER file” included “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file,” because it was not necessary for purposes of Institution. Id. Moreover, we determined that Petitioner had made a sufficient showing that Oborne’s tokens qualified as “OVER files.” Id. at 11, 24–31. Patent Owner argues that no construction is required, but, regardless, “the claims may be confirmed under the Board’s construction.” PO Resp. 11; Sur-reply 1. Petitioner also does not dispute our preliminary construction. Reply 1. In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Reply 1–2 (citing PO Resp. 49–50). “For example,” Petitioner asserts, “verification in subsequent claim elements involves the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things, as PO’s expert admits.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “In its Response, Patent Owner stated that it “agrees in substance with the Board’s construction” of this term, and clarified its understanding of that construction as requiring that “the issuing agency has verified the ‘virtual representation’ (and not the ‘credential’) to be ‘a first official representation of the original credential.’” PO Resp. 11–12. In its Reply, Petitioner points to Patent Owner’s reliance on an example in the ’854 patent Specification involving the checking of a driver’s license identification number against a DMV database to show verification of information in an OVER File generation request. Reply 2 (citing PO Resp. 14–16; Ex. 1002, 6:35–39, 6:54–65). Based on this portion of the Patent Owner Response, as well as portions of Dr. Malek’s deposition, Petitioner argues that Patent Owner “admits that a virtual representation of the credential may be ‘verified by an issuing agency’ by checking credential data against an issuing agency database.” Id. (citing Ex. 1047, 37:24–41:1, 41:2–22). In its Sur-reply, Patent Owner argues that Petitioner misinterprets its discussion of the DMV example, and contends that what Patent Owner was actually arguing based on that example is that the “credential” (the “OVER file”) is verified, not that “credential data” is verified. PO Sur-reply 1–3. After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of a credential.” Inst. Dec. 15–16. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “agrees with [Petitioner’s proposed] definition of the level of ordinary skill in the art.” PO Resp. 10 (citing Ex. 2009 ¶¶ 37–41). In the Institution Decision, we found Petitioner’s proposed level of ordinary skill in the art to be reasonable and consistent with the problems and solutions disclosed in the prior art of record. Inst. Dec. 8. Given that Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, we continue to apply Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Although we agree with Petitioner that Oborne teaches that “‘device fingerprinting may be utilized’ to provide ‘additional security’ for use of Oborne’s tokens,” Pet. 34 (citing Ex. 1011 ¶ 26 (emphasis added)), we do not agree with Petitioner’s arguments related to “device fingerprinting.” Petitioner also relies on testimony from Dr. Shamos to support its position. However, Dr. Shamos’s cited testimony in paragraph 239 merely repeats what is stated in the Petition, does not provide citation to any other evidence of record, and does not provide any further explanation as to why one of ordinary skill would have been motivated to use device fingerprinting to tie a given token to a given device such that the token for the second device would be invalid in the first device. Ex. 1005 ¶ 239. Dr. Shamos refers to Oborne’s disclosures on “digital fingerprinting” and a client’s MAC address in the token data structure. Id. (citing Ex. 1011 ¶¶ 26, 47). We have considered Petitioner’s arguments in light of Oborne’s disclosure, but find Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for a second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. Id. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of” slip op. at 24

  Patent outcomesUS 9,954,854 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,954,854
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–3 were not shown unpatentable under any of five § 103 grounds because Petitioner failed to establish sufficient motivation to modify or combine the prior art.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “A petition must identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3) Here, Petitioner merely provides general assertions about multiple references, without clearly identifying how, or why a POSITA would have been motivated, to modify the processes disclosed in those references to arrive at the claimed invention. Thus, the Petition does not state with particularity that Saxler’s particular technique for etching is to be used instead of Beach’s etching step when substituting Beach’s self-aligned process for Saxler’s two mask process. Nor does the Petitioner provide a sufficient reason, absent hindsight, why a POSITA would have been motivated to combine the references to result in a process that forms Saxler’s Modified Figure 1A. Thus, for these additional reasons, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Saxler, Beach, and Shenoy.” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Both parties agree that the differences between the definitions do not impact the analysis. Resp. 11; Reply 2. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’347 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’347 patent and the prior art. We also note that our Decision would be the same under either parties’ definition.” slip op. at 13

  • Expert testimonyOther

    “Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

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

    “remove the recess in Saxler Figure 1A to arrive at the allegedly enhancement mode transistor of Modified Figure 1A. Contrary to Petitioner’s assertions in its Reply and at the hearing, the Petition makes no argument that a POSITA would have removed the recess from Saxler Figure 1A to realize the benefits of an enhancement mode transistor. See Reply 4–5; Pet. 24–68. Rather, the Petition merely asserts that a POSITA would have understood that the gate recess of Figure 1A is optional without providing any persuasive reason why a POSITA would have removed the gate recess but retained the sloped sidewalls of Figure 1A. Pet. 25, 40, 45. For example, Petitioner asserts that Saxler’s gate contact may be “recessed or non-recessed” and that when the gate recess shown in Figure 1A is not utilized, Saxler would have the structure of Saxler Modified Figure 1A. Pet. 25 (citing Ex. 1003 ¶ 81; Ex. 1007 ¶ 52, 66); see also Pet. 40, 45 (citing Ex. 1007 ¶ 52). Neither of these paragraphs provide sufficient motivation to a POSITA to remove the gate recess from Saxler Figure 1A. Saxler paragraph 52 states: Exemplary devices according to some embodiments of the present invention are schematically illustrated in FIGS. 1A through 6. Thus, while embodiments of the present invention are described herein with reference to a recessed gate structure or a non-recessed gate structure, other embodiments of the present invention may include or not include a gate recess. Accordingly, embodiments of the present invention should not be construed as limited to the particular exemplary embodiments described herein but may include any suitable structure having a cap layer and/or passivation layer as described herein. Ex. 1007 ¶ 52. Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

  Patent outcomesUS 9,748,347 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,748,347
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, , 383 U.S. at 17–18. Petitioner argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

  The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9

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

    “1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12

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

    “As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19

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

    “We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9

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

    “1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20

  • Strike new argumentNew argument consideredGranted in part

    “response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45

  Patent outcomesUS 10,268,608 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,268,608

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.