- Solaredge Technologies Ltd. v. Sma Solar Technology AGRehearing grantedPTAB · Oct 25, 2022 · IPR2020-00021 · APJ Scott B Howard · IPR · Rehearing
On rehearing, the Board held claims 1–10 unpatentable as obvious: claims 1–3, 5, and 7 over AAPA and Frezzolini; claims 4, 6, and 8–10 over AAPA, Frezzolini, and Iwamura.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Updated Guidance. See Opp. Reh’g 4–8. Instead, Patent Owner argues that we correctly determined in the Final Written Decision that AAPA was the foundation or starting point of the ground. Id. However, the language that we relied upon from the Guidance Memo in the Final Written Decision has been deleted from the Updated Guidance. Compare Guidance Memo 6 (directing the PTAB to determine if the applicant admitted prior art is the foundation or starting point), with Updated Guidance (language omitted). Although we properly followed the Guidance Memo in the Final Written follow the clear and unambiguous requirements of the Updated Guidance. Moreover, Patent Owner does not direct us to any Federal Circuit case law that suggests using the foundation or starting point test of the Guidance Memo. See Opp. Reh’g 4–8. Although the Qualcomm panel was aware of the Guidance Memo (see 24 F.4th at 1373), the Federal Circuit neither discussed the test set out in the Guidance Memo, nor directed that the PTAB apply the foundation or starting point test. See 24 F.4th 1367.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues—supported by the testimony of Dr. Wood—that a person having ordinary skill in the art (“PHOSITA”) “would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and at least two years of design experience with photovoltaic systems.” Pet. 20 (emphasis added) (citing Ex. 1011 ¶¶ 18– 22). In the Institution Decision, we adopted Petitioner’s description of a person having ordinary skill in the art, “except that we delete[d] the qualifier ‘at least’ to eliminate vagueness as to the amount of practical experience.” Inst. Dec. 15–16. Patent Owner does not address that determination. See PO Resp. Accordingly, for the reasons given in the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of practical experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in the art would have had a bachelor’s degree in mechanical engineering, electrical engineering, or a similar discipline and two years of design experience with photovoltaic systems.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that all claim terms should be construed according to their ordinary and customary meaning at the time of the invention. Pet. 20. Patent Owner argues that two terms require explicit constructions: “the power line modem” and “the data signal coupler.” PO Resp. 20–22. Patent Owner’s proposed claim constructions limit the “power line modem” and the “data signal coupler” to DC power lines. PO Resp. 20–22. However, during the Oral Hearing, Patent Owner agreed that, consistent with the plain and ordinary meaning, the other limitations of the claims require that the components operate on DC power lines. Tr. 37:5–23. As discussed in more detail below, Petitioner’s combination of prior art references uses DC power lines. Accordingly, no express construction is needed to resolve any dispute in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, 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 11
- Strike new argumentNew argument disregardedDecided for petitioner
“of the background knowledge possessed by a person of ordinary skill in the art.” Guidance Memo 6–7; Updated Guidance 4–5. Although Patent Owner had the opportunity to make such an argument in the Sur-reply when addressing the Guidance Memo (and by implication, the identical language of Updated Guidance), Patent Owner chose not to do so and, accordingly, forfeited the argument. See Paper 9, 7. Although Patent Owner raised the argument at the oral hearing,17 that is not enough to preserve the argument as no new arguments can by made during the Oral Hearing. See CTPG at 85– 86 (“During an oral hearing, a party . . . may only present arguments relied upon in the papers previously submitted.”); Dell, 818 F.3d at 1301 (“[T]he Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Just as a movant may not make a new argument in a request for rehearing, a party opposing such a request cannot raise new arguments that it did not make before. See Apple Inc. v. Taction Tech., Inc., IPR2022-00057, Paper 15 at 4 (“A request for rehearing is not an opportunity . . . to present new arguments.”) (Denying Request for Rehearing). Accordingly, because Patent Owner did not argue that the limitations taught by the AAPA were not known in the prior art in its Patent Owner Response or Sur-reply, that argument is forfeited and cannot be considered on rehearing.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,922,048 - PTAB · May 6, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Institution
The Board instituted inter partes review of claims 1–30 on all petitioned grounds and granted Google’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.2 Further, for the reasons set forth below, we grant the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Apple IPR. See 37 C.F.R. § 42.122(b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 1. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “‘understudy’ role” and agrees that this role “shall apply so long as the current petition[er] in IPR2021-00922 remains [an] active” party.10 Id. at 6. Petitioner further represents that it will not advance any arguments separate from those advanced by Apple in the consolidated filings. Id. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id. at 6.” slip op. at 5
NonePatents in suitUS 8,553,079 - PTAB · Mar 17, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1–31 on all petitioned obviousness grounds, granted LG’s motion to join the Apple IPR, and terminated this proceeding into that joined case.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Grounds of Unpatentability and 37 C.F.R. § 42.104(b)(3)-(4) Patent Owner’s Preliminary Response repeats the same arguments over the Petition’s grounds of unpatentability and under 37 C.F.R. § 42.104 (b)(3)–(4) that Patent Owner presented in the Apple IPR. Compare Prelim. Resp. 9–25 with Apple IPR, Paper 8, 9–25. Thus, for the same reasons set forth in our institution decision in the Apple IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–31 would have been obvious. See Apple Dec. 11–22. Accordingly, we institute an inter partes review on the same basis as we instituted review in the Apple IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“In Apple v. Uniloc, the petitioner filed a first petition for inter partes review that was denied and then, after another party filed an additional petition for inter partes review of the patent, the petitioner filed its second petition with a motion for joinder. Apple v. Uniloc at 6. However, not only was that the second petition for inter partes review filed by the petitioner, but the petitioner was also barred under 35 U.S.C. § 315(b) from filing any further petitions. Id. at 6–7. Thus, under these facts, among others, the panel exercised its discretion to decline institution of the petition after applying the General Plastic factors. Id. at 13. Here, however, none of the unique facts in Apple v. Uniloc are present. The Petition is substantially identical to the petition in IPR2021- 00920 (“the Apple IPR”), which it seeks to join, and it presents us with a standard “me too” petition with a motion for joinder. Patent Owner presents no unique facts here that separate the Petition from most other “me too” petitions with a motion for joinder, with the possible exception that Patent Owner sued both Petitioner and the petitioner in the Apple IPR for patent infringement, which is those parties’ only connection to one another identified by Patent Owner. See Prelim. Resp. 29.9” slip op. at 5
- Other 314aDecided for petitioner
“35 U.S.C. § 315(d) states: “if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Though we agree that 35 U.S.C. § 315(d) gives the Director authority to determine how to proceed in the present circumstances, we decline the invitation to deny the Petition based on the existence of co-pending ex parte reexamination No. 90/014,901 and our finite resources.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should: set forth the reasons joinder is appropriate; identify any new grounds of unpatentability asserted in the petition; and explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). Petitioner timely filed the Motion no later than one month after institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. at 6. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “understudy role” and “will only assume the lead role in the proceedings if Apple is no longer a party to the proceedings or unable to advance arguments for one or more claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner further represents that it “will not advance any arguments separate from those advanced by Apple in the consolidated filings.” Id. at 3. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id.” slip op. at 10
Discretionary denialPatents in suitUS 7,933,431 - PTAB · Mar 17, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–30 on all petition grounds and granted LG’s motion to join the Apple IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“over the Petition’s grounds of unpatentability that Patent Owner presented in the Apple IPR. Compare Prelim. Resp. 5–21 with Apple IPR, Paper 8, 5–21. Thus, for the same reasons set forth in our institution decision in the Apple IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1– 30 would have been obvious. See Apple Dec. 7–17. Accordingly, we institute an inter partes review on the same basis as we instituted review in the Apple IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Here, however, none of the unique facts in Apple v. Uniloc are present. The Petition is substantially identical to the petition in IPR2021- 00922 (“the Apple IPR”), which it seeks to join, and it presents us with a standard “me too” petition with a motion for joinder. Patent Owner presents no unique facts here that separate the Petition from most other “me too” petitions with a motion for joinder, with the possible exception that Patent Owner sued both Petitioner and the petitioner in the Apple IPR for patent infringement, which is those parties’ only connection to one another identified by Patent Owner. See Prelim. Resp. 25.10 The statutes and rules governing inter partes review expressly provide for joinder. See 35 U.S.C. § 315(c); 37 C.F.R. 42.122(b). For example, 35 U.S.C. § 315(c) states: Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Under Patent Owner’s reasoning (see Prelim. Resp. 24–29)11, essentially any petition with a motion for joinder would be denied under the General Plastic factors, even though our governing statutes and rules expressly allow the practice. Patent Owner does not address why we should ignore our governing statutes and rules allowing joinder to use the facts surrounding a motion for joinder to decline to institute the petition, and we decline to do so.” slip op. at 5
- Other 314aDecided for petitioner
“Board and . . . co-pending [ex parte] reexamination [No. 90/014,900 of the ’079 patent], the Director should deny the Petition” under 35 U.S.C. § 315(d). Prelim. Resp. 29. 35 U.S.C. § 315(d) states: “if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Though we agree that 35 U.S.C. § 315(d) gives the Director authority to determine how to proceed in the present circumstances, we decline the invitation to deny the Petition based on the existence of co-pending ex parte reexamination No. 90/014,900 and our finite resources.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“institution of the Apple IPR. See 37 C.F.R. § 42.122 (b). As noted, the Petition in this case asserts the same unpatentability grounds on which we instituted review in the Apple IPR. See Mot. 2. Petitioner also relies on the same prior art analysis and expert testimony submitted by the Apple petitioner. See id. Indeed, the Petition is nearly identical to the petition filed by the Apple petitioner. See id. at 6. Thus, this inter partes review does not present any ground or matter not already at issue in the Apple IPR. Id. If joinder is granted, Petitioner agrees to assume an “understudy role” and “will only assume the lead role in the proceedings if Apple is no longer a party to the proceedings or unable to advance arguments for one or more claims, or grounds, for example, because of § 315(e)(1).” Id. at 2. Petitioner further represents that it “will not advance any arguments separate from those advanced by Apple in the consolidated filings.” Id. at 3. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that joinder will not impact the trial schedule for the Apple IPR. Id.” slip op. at 10
Discretionary denialPatents in suitUS 8,553,079 - Hulu, LLC v. Pucs, Inc.Adverse judgmentPTAB · Jan 10, 2022 · IPR2021-00811 · APJ Joni Y Chang · IPR · Adverse judgment
The Board entered adverse judgment against Pucs, Inc. on claims 1–7 after the patent owner disclaimed all claims remaining in the instituted trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner disclaims claim 1−7 of the 619 patent, which are all claims for which trial was instituted such that there are no remaining claims in the trial. Ex. 2005, 1. In its Request for Judgment, Patent Owner requests adverse judgment against itself with respect to the claims of the ’619 patent. Paper 18, 1.” slip op. at 2
NonePatents in suitUS 10,728,619 - Solaredge Technologies Ltd. v. Sma Solar Technology, AG.Adverse judgmentPTAB · Nov 30, 2021 · IPR2020-00965 · APJ Thu A Dang · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–23 after it disclaimed those claims, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Actions construed as a request for adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, Patent Owner has disclaimed claims 1–23 of the ’630 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). See Ex. 2102, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 1–23, the only claims at issue in this trial. Pet. Reply 1; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d Case No. 2021-1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021).” slip op. at 3
NonePatents in suitUS 8,779,630 - Solaredge Technologies Ltd. v. Sma Solar Technology, AG.Adverse judgmentPTAB · Nov 30, 2021 · IPR2020-00964 · APJ Thu A Dang · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner on claims 1–23 after it disclaimed those claims, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Actions construed as a request for adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, Patent Owner has disclaimed claims 1–23 of the ’630 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). See Ex. 2002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 1–23, the only claims at issue, in this trial. Pet. Reply 1; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d Case No. 2021-1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021)..” slip op. at 3
NonePatents in suitUS 8,779,630 - Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentablePTAB · Jan 5, 2016 · IPR2014-01089 · APJ Susan L C Mitchell · IPR · Final written decision
Claim 35 is unpatentable under § 103(a) over Mozgrin, Kudryavtsev, Fahey, and Iwamura, and over Mozgrin, Fahey, and Iwamura.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted a revised Motion for Joinder filed by the Gillette Company, joining Case IPR2014-01004 with the instant” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“The first step in construing a means-plus-function claim element is to identify the recited function in the claim element. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). The second step is to look to the specification and identify the corresponding structure for that recited function. Id. A structure disclosed in the specification qualifies as “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). “While corresponding structure need not include all things necessary to enable the claimed invention to work, it must include all structure that actually performs the recited function.” Default Proof Credit Card Sys. Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005). We agreed that the three claim elements identified by GlobalFoundries were written in means-plus-function form and fall under 35 U.S.C. § 112, ¶ 6. Dec. 9–10. Upon review of the parties’ contentions” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As we stated in our Decision on Institution, see Dec. 9–10, the recitation of “feed gas” in claim 35 does not imply necessarily the flow of gas. Dec. 11. We previously noted that the Specification of the ’652 patent describes the use of in-line gas valves 242, 244 that can control the flow of gas to the chamber (Ex. 1201, 8:3–5), and also describes pulsing feed gases 234, 236 to help generate excited atoms, including metastable atoms, in gap 212 (Ex. 1201, 8:3–5, 8:23–25). See Dec. 10–11. Therefore, we concluded that such control of the feed gas supports the notion that “feed gas” does not necessitate a “gas that is a flowing gas.” Id. Although we agree with Zond that this pulsed gas pressure embodiment can cause the gas to flow, it does not necessitate that the gas flow. We also previously stated that the Specification of the ’652 patent further states that feed gases may be introduced from multiple locations into the chamber. Id. (citing Ex. 1201, 8:1–3). We also stated that having multiple sources for feed gases does not support a construction that “a volume of feed gas” requires that the initial plasma and excited ions are generated from the same volume of feed gas, assuming that a particular volume of feed gas may be identified in such a process. Id. We discern no reason to modify our conclusions that the claim limitation does not imply necessarily the flow of gas nor does it require that the initial plasma and excited ions are generated from the same volume of feed gas.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with GlobalFoundries that Mozgrin does indeed disclose “means for super-ionizing the initial plasma proximate to the cathode assembly, thereby generating a high-density plasma.” In addition to the detailed explanation of how Mozgrin teaches creating a high density plasma by super-ionizing the initial plasma, see Pet. 4–17, 20–22; Ex. 1202 ¶¶ 84– 97, Dr. Kortshagen further explains in his Supplemental Declaration, in response to Zond’s arguments, that Mozgrin discloses power levels and pulse characteristics that fall within the ranges disclosed in the ’652 patent for first generating an initial plasma and then applying a high-power pulse to increase the plasma density. Reply 9 (citing Ex. 1216 ¶¶ 24–28). Dr. Kortshagen summarized his comparison of the ’652 patent and Mozgrin in the table below. Ex. 1216 ¶ 29. From this comparison of the applied power and resulting plasma density for the generation of an initial plasma and the comparison of the high-power pulse, including the pulse rise time and duration, and the resulting plasma density for the generation of the high-density plasma as shown in the table above, Dr. Kortshagen concludes that “Mozgrin expressly teaches generating a high-density plasma from an initial plasma under the conditions and parameters that the ’652 patent discloses will super-ionize the initial plasma to generate a high-density plasma.” Ex. 1216 ¶ 30; see also Ex. 1202 ¶ 87 (explaining that Mozgrin discloses embodiments and parameters that result in at least 75% of the neutral atoms in the plasma being converted to ions as required by claim 35). We also agree with GlobalFoundries, as Dr. Kortshagen explains, that Mozgrin expressly confirms super-ionizing the initial plasma to create a high density plasma. See Ex. 1216 ¶¶ 31–34. Dr. Kortshagen explains that Mozgrin discloses an ionization degree that approaches 100 percent for the transition between regime 2 and 3, an assessment with which Dr. Hartsough agrees. Id.; Ex. 1217, 112:12–124:23. At a level of ionization approaching 100 percent, Mozgrin discloses super-ionization of an initial plasma.8 See Ex. 1202 ¶ 88 (concluding “if Mozgrin’s neutral gas density were about 2.0 x 1015 atoms cm-3, then at least 75% of the neutral argon gas would have been ionized”).” slip op. at 34
Patent outcomesUS 6,806,652 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,806,652 - Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentablePTAB · Oct 2, 2015 · IPR2014-00805 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 are unpatentable under § 103 over Wang with Kawamata, Wang with Lantsman, or Wang with Lantsman and Kawamata.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted revised Motions for Joinder filed by other Petitioners listed in the Caption above, joining Cases IPR2014-00851, IPR2014-00990, and IPR2014-01069 with the instant trial (see Papers 12, 13), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 30).5 Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”), along with a Declaration of Larry D. Hartsough, Ph.D. (Ex. 2015) to support its positions. Petitioner filed a Reply (Paper 41, “Reply”) to the Patent Owner Response, along with a Declaration of Lawrence J. Overzet, Ph.D (Ex. 1126). An oral hearing6 was held on June 8, 2015. A transcript of the hearing is included in the record. Paper 49 (“Tr.”).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the evidence before us, we determine that “creates” would be understood by one of ordinary skill in the art to mean “to bring into existence,” consistent with the use of the word in the Specification and the plain and ordinary meaning thereof. See Create Definition, Merriam- Webster’s Collegiate Dictionary 271 (10th edition 2000). Furthermore, the ’421 patent does not explicitly define “creates a weakly-ionized plasma.” While Patent Owner provides examples described in the Specification (PO Resp. 18), we will not import the suggested “ignition” limitation into the claim. See Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998); see also, SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim 14 language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). As such, we interpret the term “creates a weakly-ionized plasma” as “brings into existence a weakly-ionized plasma,” and do not limit the claim to a circumstance that the gas is ignited from a state in which there is no existing plasma, as proposed by Patent Owner.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Given the evidence before us in the entire record, for the reasons discussed above, we determine that Petitioner has demonstrated, by a preponderance of evidence, that Wang discloses a “power supply that generates a voltage pulse between the anode and the cathode assembly that 25 creates a weakly-ionized plasma and then a strongly-ionized plasma from the weakly-ionized plasma.”” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner asserts “[o]ne of ordinary skill would have been motivated to incorporate the teachings of Kawamata in Wang, e.g., using input power to control the density of the plasma and thereby control the temperature of the sputtering material so as to control the sputtering yield,” because “[b]oth Wang and Kawamata provide ways to enhance the sputtering rate” and it “would have been a combination of old elements in which each element behaved as expected.” Pet. 40–41 (citing Ex. 1102 ¶¶ 118–120). Beyond the arguments provided with respect to the independent claims, which we do not find persuasive for the reasons discussed above, Patent Owner does not provide separate arguments or otherwise address claims 3–5, 18–20, 36, 40, and 41 in its Response. We have reviewed 32 Petitioner’s arguments and evidence regarding these dependent claims (Pet. 39–42, 24–29; Ex. 1102 ¶¶ 76–79, 83, 85–86, 89, 116–120, 122, 124– 125; Ex. 1109, 2:6–9, 3:18–20, 3:34–38, 5:66–6:3, 7:36–40, 7:53–58, Figs. 1, 2; Ex. 1104, 4:27–29; Ex. 1101, 2:9–10, 9:57–61), and, given the evidence in the record before us, we determine that Petitioner has demonstrated, by a preponderance of evidence, that the combination of Wang and Kawamata renders obvious each of claims 3–5, 18–20, 36, 40, and 41.” slip op. at 32
Patent outcomesUS 7,811,421 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,811,421 - The Gillette Company / Fujitsu Semiconductor Limited et al. v. Zond, LLCAll claims unpatentablePTAB · Oct 1, 2015 · IPR2014-00580 · APJ Joni Y Chang · IPR · Final written decision
Claims 1–20 and 34–39 are unpatentable under § 103(a) over the five instituted grounds; the majority finds the Mozgrin Thesis publicly accessible, with a partial dissent on claim 2.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequent to institution, we granted the Motion for Joinder filed by Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp. (collectively, “TSMC”), Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America, Inc. (collectively, “Fujitsu”), joining Case IPR2014-01479 with the instant trial (Paper 20), and also granted a Joint Motion to Terminate with respect to TSMC (Paper 37).2 Zond filed a Response (Paper 32 (“PO Resp.”)), and Gillette filed a Reply (Paper 39 (“Reply”)). Oral hearing3 was held on June 16, 2015, and a transcript of the hearing was entered into the record. Paper 47 (“Tr.”).” slip op. at 2
- Skill levelOther
“B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. The level of ordinary skill in the art is reflected by the prior art of record. See 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).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,”6 and “the standard was properly adopted by PTO regulation.”). Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may rebut that presumption by providing a” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are not persuaded by Zond’s arguments, as they narrowly focus on Mozgrin’s regime 3, and fail to consider Mozgrin’s regime 2 that is dedicated to sputtering. It is well-settled that, when evaluating claims for obviousness, “the prior art as a whole must be considered.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986). As Gillette points out (Pet. 13–14), Mozgrin explicitly states that, in regime 2, the voltage pulse that generates a strongly-ionized plasma from the weakly-ionized plasma is appropriate for sputtering. Ex. 1002, 402, 406, 409 (“The implementation of the high-current magnetron discharge (regime 2) in sputtering . . . provides an enhancement in . . . plasma density (exceeding 2 x 1013 cm-3).”), Figs. 1, 3). Mozgrin also discloses specific process parameter ranges that are more efficient for sputtering in regime 2. Id. Therefore, contrary to Zond’s assertion that Mozgrin’s voltage pulse creates a direct transition to regime 3, one of ordinary skill in the art reading Mozgrin would have been able to select the pulse characteristics and parameter ranges to generate a strongly-ionized plasma in regime 2 that is dedicated to sputtering. Upon consideration of Mozgrin and Fortov, as a whole, we do not share Zond’s view that there are contradictory teachings between Mozgrin and Fortov that would dissuade one of ordinary skill in the art from combining the prior art teachings to achieve Fortov’s non-linear increase in sputtering yield.” slip op. at 25
Patent outcomesUS 6,896,773 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,896,773
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.