• Legacy Separators, LLC v. Halliburton Energy Services, Inc.Institution denied
  PTAB · Dec 4, 2015 · IPR2015-01526 · APJ James J Mayberry · IPR · Institution

  The Board denied institution on all challenged claims 1–17 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below upon considering the Petition and the Preliminary Response, we conclude that the information presented in the Petition does not establish a reasonable likelihood that Legacy will prevail in challenging any of claims 1–17 of the ’215 patent. We do not authorize an inter partes review to be instituted as to any challenged claim.” 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

    “and second chambers, for restricting fluid flow to generate a pressure drop in said production fluid and to separate gas and liquid as said production fluid enters said second chamber.” Ex. 1001, 4:61–66. Legacy recognizes that this claim limitation invokes the requirements of 35 U.S.C. § 112, paragraph 6, and we agree.2 See Pet. 20. Accordingly, we construe this limitation by 2 Paragraph 6 of 35 U.S.C. § 112 was replaced with newly designated § 112(f) when § 4(c) of the America Invents Act (ALA), Pub.L. No. 112–29, took effect on September 16, 2012. Because the application resulting in the determining the claimed function and identifying the structure disclosed in the specification that corresponds to the means for performing that function. See Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see also In re Donaldson Co., 16 F.3d 1189, 1193 (Fed. Cir. 1994) (“[P]aragraph six applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”).” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Lee ’193 discloses the recited means of claim 1. First, Legacy fails to support its contention that diffuser 42 necessarily restricts flow because it increases pressure in the production fluid. Indeed, a diffuser operates in the exact opposite manner—it increases the cross-sectional flow area that a fluid passes through, which causes the fluid to decrease in velocity and increase in pressure. Further, Legacy’s general citation to Dr. Wooley’s declaration fails to lend support to its position. We are directed to nothing in Dr. Wooley’s declaration, other than a conclusory statement that Lee ’193 anticipates claim 1, to lend support to the position that the disclosure that diffuser 42 increases fluid pressure necessarily means that diffuser 42 restricts fluid flow. Accordingly, we find that Lee ’193’s disclosure that fluid pressure increases as it passes through diffuser 42 does not support a finding that diffuser 42 necessarily restricts fluid flow. More significantly, the means-plus-function recitation of claim 1 requires that the corresponding means restrict fluid flow to generate a pressure drop in the production fluid—that is, a consequence of the restricted flow is to generate a pressure drop in the fluid. As Legacy recognizes, diffuser 42 causes an increase in the fluid pressure, not a drop in the fluid pressure as the production fluid passes through the diffuser. See Pet. 27; see also Prelim. Resp. 20 (“On the contrary, . . . the diffuser in Lee ’193 increases the pressure of the fluid.”). Legacy’s argument that diffuser 42 functions to generate a pressure drop in the production fluid is equally unavailing. As an initial matter, Legacy’s position contradicts its position that diffuser 42 increases the pressure in the production fluid. Legacy fails to adequately explain how diffuser 42 can act to both increase pressure in the production fluid and cause a pressure drop “across diffuser 42.” See Pet. 27. Legacy attempts to avoid this contradiction by asserting that “[t]he increased pressure of the production fluid leaving the diffuser 42, in comparison to the reduced pressure in the vented separation chamber, generates a pressure drop in the production fluid entering the separation chamber.” Id. at 29–30 (emphasis added). That is, Legacy argues that the pressure drop function is achieved because the pressure of the production fluid as it leaves diffuser 42 is greater than the pressure in the fluid within the separator section housing centrifuge 44. However, as argued by Legacy, this pressure profile would result in a pressure drop in the fluid across the second chamber, not across diffuser 42. Significantly, the means of claim 1 must function to restrict fluid flow to generate a pressure drop in the production fluid—that is, the generated pressure drop results from restricting the flow in the means.” slip op. at 14

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

    “As discussed above in connection with our analysis of claim 1 as anticipated by Lee ’193, Legacy fails to persuade us that Lee ’193 anticipates claim 1—specifically, Legacy fails to persuade us that Lee ’193 includes the recited means-plus function limitation of claim 1. Further, Legacy fails to explain how Carle remedies this deficiency. Accordingly, on the record before us, we conclude that Legacy has failed to show a reasonable likelihood of prevailing in its assertion that claim 5 is unpatentable over Lee ’193 and Carle under Ground 2.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,761,215
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00304 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving intact its final decision that claims 24 and 25 are unpatentable as obvious over Gass.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “selected sequence of fastening” from claim 24 during prosecution necessarily alters the construction of additional terms in the claims. Reh’g Req. 3–6 (discussing “fastening location,” “predetermined sequence,” “fastening monitor,” and “sequence output”). With respect to these claim interpretation arguments, however, Patent Owner again fails to identify where each of these arguments was raised previously.1 Moreover, with respect to the effect of any such disavowal on the interpretation of other claim terms, we could not have misapprehended or overlooked arguments that Patent Owner did not raise previously. Even if we addressed this new argument, as Patent Owner urges we must under Microsoft Corp. v. Proxyconn, Inc., it fails. Patent Owner asserts that its clear disavowal may be drawn from a comparison of claim 1 with claims 7 and 11 and the addition of claim 46, which became challenged claim 24, “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of the claim as 1 New arguments may not be raised at an oral hearing. Patent Owner’s challenge during the oral hearing to Petitioner’s allegedly late submission of a dictionary definition of “location” does not make these arguments part of the record. Reh’g Req. 3–4 (citing Tr. 43:6–18). Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013). Patent Owner also argues that governing case law requires that we consider the prosecution history. Patent Owner notes that, in Microsoft Corp. v. Proxyconn, Inc., the Federal Circuit observed that the Board “should also consult the patent's prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Nos. 2014-1542, 2014-1543, 2015 WL3747257 at *3 (Fed. Cir. Jun. 16, 2015). In this regard, Patent Owner argues that we are bound by the Examiner’s claim construction resulting from Applicants’ disavowal of scope during prosecution. Reh’g Req. 7–8 (citing Tr. 55:17–18); see Tr. 55:13–24. As the prosecution history makes clear, Patent Owner proffered a new claim 46 during prosecution “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening,” but not in response to any Examiner request (Ex. 1006, 17) unlike the situation in Tempo Lighting, Inc. v. Tivoli, LLC. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir. 2014). Thus, we are not persuaded that Patent Owner has identified a claim construction resulting from the prosecution history that constitutes a “deal” between Applicants and the Examiner, binding on this panel. See Reh’g Req. 3 (“A deal was made to secure allowance of the claims by specifically amending them to only read on the ‘predetermined sequence program’ embodiment of the specification that requires a predetermined sequence of fastening among locations 52a–52c.”; emphasis added). Even if we were to accept Patent Owner’s arguments that a clear disavowal of claim scope exists in the prosecution history of the ’573 patent, as the Federal Circuit observed, in such a situation, “the PTO is under no obligation to accept a claim construction proffered as a prosecution history disclaimer, which generally only binds the patent owner.” Tempo Lighting, 742 F.3d at 978. Therefore, we are not persuaded that our consideration of the prosecution history was contrary to governing precedent, as argued by Patent Owner, such that it amounted to an abuse of discretion.” slip op. at 5

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2032, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 38, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point.  Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 7

  Claim construction
  Patents in suitUS 6,763,573
• Johnson Controls, Inc. v. Wildcat Licensing Wi, LLCRehearing denied
  PTAB · Nov 12, 2015 · IPR2014-00305 · APJ James B Arpin · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request and left in place its final decision that claims 22–28 were unpatentable under § 103(a).

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (emphasis added). When reconsidering a Final Written Decision, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). Thus, a request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “claims 7 and 11 and the addition of claim 46, which became challenged claim 24 of the parent patent to the ’831 patent, Patent No. US 6,763,573 B2 (Ex. 1001, “the ’573 patent”), “to focus on one of the important aspects of the present invention, namely the predetermined sequence program requiring a predetermined sequence fastening.” Req. Reh’g 2 (quoting Ex. 1006, 17); PO Resp. 22–23. This, however, does not rise to the level of an unequivocal and unambiguous disavowal of claim scope to narrow the meaning of claim 22 of the ’831 patent, as Patent Owner asserts. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1094-95 (Fed. Cir. 2013).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Nevertheless, as Petitioner notes, Mr. Osentoski testified that Gass teaches that its predetermined sequence is programmed “before the operator begins the process of assembly the bolts at the process sites.” Ex. 2033, 15:19–16:2. In response to essentially the same questions presented repeatedly by Wildcat’s counsel, Mr. Osentoski consistently testified that Gass teaches the “predetermined sequence” and “sequence output” claim elements. E.g., id., 19:12–20:5; 21:14–22:2; 27:10–17; 30:2–31:2; 44:2–23. Paper 39, 4. Thus, we were not persuaded that Patent Owner’s characterization of Mr. Osentoski’s response to this question should be read to outweigh Mr. Osentoski’s repeated and otherwise consistent testimony on this point. Therefore, we are not persuaded that we misapprehended or overlooked a significant inconsistency in Mr. Osentoski’s testimony.” slip op. at 8

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

    “We agree with Petitioner that the broadest reasonable interpretation of “fastening location” is not limited to a single opening, but may encompass a position or site where fastening occurs when assigned its ordinary meaning. See Ex. 1041, 3. Having to make such a distinction between a single opening and a fastening site with more than one opening is negated, however, by the open transitional phrase, [“comprising,”] in claim 22. Because claim 22 uses the open transitional phrase “comprising,” additional fastening operations between the first and second fastening operations are not excluded, as long as the predetermined sequence between the first and second locations is maintained. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term ‘comprising’ is well understood to mean ‘including but not limited to.’”); Ex. 1001, 12:13–16 (contemplating a “plurality” of fastening locations, but [“at least”] first and second fastening locations). Final Dec. 8 (emphasis added). This interpretation does not change the order of the recited operations, but acknowledges that other operations may be encompassed within the scope of the challenged claims. Thus, we have not abused our discretion by misapplying governing precedent. In addition, Patent Owner fails to identify where it made these arguments previously in its Patent Owner Response. Because Patent Owner has not raised these arguments in its Patent Owner Response, we could not have misapprehended or overlooked an argument that Patent Owner did not raise previously.” slip op. at 9

  Claim construction
  Patents in suitUS 7,062,831
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00828 · APJ Joni Y Chang · IPR · Final written decision

  Claims 30–37, 39, and 40 are unpatentable under § 103(a) over Iwamura, Angelbeck, and Pinsley, with Wells or Lovelock added for specified dependent claims.

  RulingsFinal written decision

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

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1223, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1201, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1223, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Skill levelOther

    “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. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding that Dr. Hartsough provides a definition of “a person of ordinary skill in the 10 art” in the context of the ’779 patent,5 we are mindful that the level of ordinary skill in the art also 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 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the evidence in this record, we credit Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) that magnets, such as those disclosed in Pinsley and Angelbeck, generate a magnetic field that substantially traps electrons in a plasma apparatus. Notably, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generate a magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Dr. Hartsough acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Both Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) and Dr. Hartsough’s cross-examination testimony (Ex. 1223, 123:4–13) are consistent with the prior art of record, including the Admitted Prior Art, which recognizes a magnetic field is strongest at the poles of the magnet and weakest in the region at the center between the poles (Ex. 1201, 3:12–13). As discussed above, the prior art of record clearly shows that it was well-known in the art at the time of the invention to use magnets in a plasma apparatus for trapping electrons. Based on the prior art of record, we agree with Dr. Kortshagen that “the use of magnets and their corresponding magnetic fields to trap electrons . . . was already known in the prior art,” at the time of the invention. See Ex. 1221 ¶ 37.” slip op. at 24

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

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 47–49, 52, 54–55. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1205, 2:43–48; Ex. 1206, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground 30 state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1202 ¶¶ 120, 140–41. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. X-ray radiation” slip op. at 30

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00917 · APJ Joni Y Chang · IPR · Final written decision

  Claims 7, 9, 20, 21, 38, and 44 are unpatentable under § 103(a) over the specified combinations of Iwamura, Angelbeck, and Pinsley with Gruber or Wells.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “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. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding 10 that Dr. Hartsough provides a definition of “a person of ordinary skill in the art” in the context of the ’779 patent,6 we are mindful that the level of ordinary skill in the art also 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 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1419, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1401, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1419, 42:9–43:17. 9 Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 44–47. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1405, 2:43–48; Ex. 1406, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1419, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1401, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1402 ¶ 139. We credit Dr. Kortshagen’s testimony, as it is 34 consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Trapping electrons and ions” slip op. at 34

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00829 · APJ Joni Y Chang · IPR · Final written decision

  Claims 16, 28, 41, 42, and 45 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley; claim 46 is unpatentable as anticipated by Iwamura.

  RulingsFinal written decision

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

    “(ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1317, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma includes excited atoms and metastable atoms. Ex. 1301, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1317, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

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

    “In its Petition, GlobalFoundries identifies four claim elements recited in claims 41 and 42 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 6, but Zond did not proffer any claim constructions as to these claim elements prior to institution of this inter partes review.6 Pet. 17–19; Prelim. 6 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296 (2011). Because the ’779 9 Resp. 18–19. We agree with GlobalFoundries that these claim elements are written in means-plus-function form and fall under § 112 ¶ 6, because: (1) each claim element uses the term “means for”; (2) the term “means for” in each claim element is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. See Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a claim creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6); Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is modified by functional language and is not modified by any structure recited in the claim to perform the claimed function); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of the word ‘means’ creates a presumption that § 112, ¶ 6, applies” (citing Personalized Media, 161 F.3d at 703)).” slip op. at 9

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

    “Zond’s argument and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized, containing no excited or metastable atom, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s 17 disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1307, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.” (emphasis added)). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1317, 42:9–43:17, 74:2–76:4; Ex. 1315 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited or metastable atoms also is inconsistent with the ordinary and customary” slip op. at 17

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

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 48; Ex. 1304, 30, 34; Ex. 1302 ¶ 138. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1305, 2:31–36; Ex. 1306, 2:45–56; Ex. 1301, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both 40 Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1305, 2:43–48, Ex. 1306, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting atoms for generating a plasma.” slip op. at 40

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01073 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–4, 10–15, 17, 18, 24–27, and 29 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Ex. 1017, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1001, 1:7–8; 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1017, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

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

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1002 ¶ 129. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is 35 beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Conclusion” slip op. at 35

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

    “Zond’s argument and expert testimony, however, improperly rest on the notion that all of the electrons, in Angelbeck, are lost to the wall. On the contrary, Angelbeck specifically indicates that “[t]he current-excited discharge passed through the gas within tube 10 creates a plasma in which the atoms are ionized and the electrons are freed.” Ex. 1006, 2:54–56 (emphasis added). More importantly, as discussed above, Angelbeck teaches that a magnetic field creates a high density of excited atoms and increases the efficiency of excitation. Id. at 1:36–41, 2:18–20, 2:29–33. Given the evidence before us, we do not discern that Angelbeck criticizes, discredits, or otherwise discourages investigation into using magnetic field to substantially trap electrons. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure of non-preferred embodiments.”). Therefore, a person of ordinary skill would not have been dissuaded from combining Iwamura with Angelbeck and Pinsley.” slip op. at 33

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

    “the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 50; Ex. 1004, 30, 34; Ex. 1002 ¶ 130. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1005, 2:31–36; Ex. 1006, 2:45–56; Ex. 1001, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1005, 2:43–48, Ex. 1006, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 32

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01076 · APJ Joni Y Chang · IPR · Final written decision

  Claims 43 is unpatentable as anticipated by Iwamura; claims 5, 6, 8, 19, 22, and 23 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

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

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1117, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1101, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1117, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and 9 metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

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

    “Zond’s arguments and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized containing no excited or metastable atoms, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1107, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.”) (emphasis added). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to 15 have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1117, 42:9–43:17, 74:2–76:4; Ex. 1115 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited atoms also is inconsistent with the ordinary and customary meaning of the term “plasma”—namely, “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms.” As discussed above, both Dr. Kortshagen and Dr. Hartsough agree with that definition. Ex. 1102 ¶¶ 22–28; Ex. 1117, 42:9–43:17. Furthermore, the Specification of the ’779 patent discloses that a plasma includes charged particles as well as neutral excited and metastable atoms. Ex. 1101, 8:43–48. More importantly, as the Specification explains, a volume of excited or metastable atoms is generated when “a discharge is created in a discharge region” between a pair of electrodes, similar to Iwamura’s first plasma generation unit, energizing and ionizing a portion of ground state atoms. Id. at 14:4–14:23 (“Some of the ground state atoms 208 are directly ionized, which releases ions 424 and 16 electrons 426 into the stream of metastable atoms 218. . . . The metastable atoms 218, the free ions 424 and electrons 426 then pass through the output 423 of the metastable atom source 402.”) (emphasis added). Therefore, even in the embodiment in which Iwamura’s first generation unit generates a plasma, one with ordinary skill in the art would have recognized that the plasma reaching Iwamura’s second generation unit includes a volume of excited and metastable atoms. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that Iwamura discloses an energy source that raises “an energy of excited atoms in the volume of excited atoms so that at least a portion of the excited atoms in the volume of excited is ionized, thereby generating a plasma with a multi-step ionization process,” as recited in claim 43. Excited atom source” slip op. at 15

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

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1102 ¶¶ 142, 159. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predicable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley.” slip op. at 39

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

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by 35 Kudryavtsev. Pet. 55; Ex. 1104, 30, 34; Ex. 1102 ¶ 143. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1105, 2:31–36; Ex. 1106, 2:45–56; Ex. 1101, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1105, 2:43–48, Ex. 1106, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 35

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Infopia Co., Ltd. v. Polymer Technology Systems, Inc.Institution denied
  PTAB · Oct 21, 2015 · IPR2015-01192 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 19 and 20 obvious; the asserted combinations did not address separation of chylomicrons.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims of the ’397 patent. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “contain[s] non-HDL cholesterol separation chemicals for separating the non-HDL blood components from the HDL blood components so that the non-HDL components do not participate in said HDL reaction layer.” Ex. 1001, 24:17–23. The Specification defines “[n]on-HDL” as “LDL, VLDL and chylomicrons, i.e., lipoproteins other than HDL that will react with a conventional cholesterol reaction membrane.” Id. at 7:38–40. The Specification further states in the Background Section that “non-HDLs (i.e., LDL, VLDL and chylomicrons) must be removed from the plasma to be tested because reagents used to determine the level of HDL will also react with LDL and VLDL.” Id. at 1:43–46. In view of these statements in the Specification, Patent Owner asserts that the patentee acted as its own lexicographer in defining the term. Prelim Resp. 12–13. Consistent with the express definition provided in the Specification, we construe “non-HDL” as “LDL, VLDL and chylomicrons.” slip op. at 7

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

    “and Steinhausen. Pet. 14. In order to satisfy the claim requirement of a non- HDL separation chemistry layer, Petitioner relies upon the teachings of Patel and Kozak. Id. at 37–38, 49–50. Despite the express definition of “non- HDL” provided in the Specification, as discussed above, Petitioner does not address chylomicrons at all in the Petition. Rather, Petitioner only points to the teachings of Patel and Kozak of removing VLDL and LDL fractions using a filter. Id. (citing Ex. 1014, 3:3–9, 6:48–55; Ex. 1007, 24:11–21, Fig. 4). Petitioner does not identify any other prior art teaching regarding the separation of chylomicrons, nor has Petitioner alleged that chylomicrons would inherently be removed by using any of the prior art devices. Moreover, Petitioner has not alleged that the separation of chylomicrons, in addition to LDL and VLDL, would otherwise have been obvious.8 Because we construe the claims to require the separation of all three types of lipoproteins defined as “non-HDL” (i.e., LDL, VLDL, and chylomicrons) by the non-HDL separation chemistry layer, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on any of the grounds presented.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,087,397
• Infopia Co., Ltd. v. Polymer Technology Systems, Inc.Institution denied
  PTAB · Oct 21, 2015 · IPR2015-01109 · APJ Christopher G Paulraj · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–18 obvious, including separation of chylomicrons.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition and Preliminary Response, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to any of the challenged claims of the ’397 patent. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “contain[s] non-HDL cholesterol separation chemicals for separating the non-HDL blood components from the HDL blood components so that the non-HDL components do not participate in said HDL reaction layer.” Ex. 1001, 24:17–23. The Specification defines “[n]on-HDL” as “LDL, VLDL and chylomicrons, i.e., lipoproteins other than HDL that will react with a conventional cholesterol reaction membrane.” Id. at 7:38–40. The Specification further states in the Background Section that “non-HDLs (i.e., LDL, VLDL and chylomicrons) must be removed from the plasma to be tested because reagents used to determine the level of HDL will also react with LDL and VLDL.” Id. at 1:43–46. In view of these statements in the Specification, Patent Owner asserts that the patentee acted as its own lexicographer in defining the term. Prelim Resp. 13–14. Consistent with the express definition provided in the Specification, we construe “non-HDL” as “LDL, VLDL and chylomicrons.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “B. Analysis Petitioner asserts that independent claim 1 is rendered obvious by the combination of Connolly or Carroll with Patel and Kozak. Pet. 31, 49. In order to satisfy the claim requirement of a non-HDL separation chemistry layer, Petitioner relies upon the teachings of Patel and Kozak. Id. at 33, 50. Despite the express definition of “non-HDL” provided in the Specification, as discussed above, Petitioner does not address chylomicrons at all in the Petition. Rather, Petitioner only points to the teachings of Patel and Kozak of removing VLDL and LDL fractions using a filter. Id. (citing Ex. 1014, 3:3–9, 6:48–55; Ex. 1007, 24:11–21, Fig. 4). Petitioner does not identify any other prior art teaching regarding the separation of chylomicrons, nor has Petitioner alleged that chylomicrons would inherently be removed by using any of the prior art devices. Moreover, Petitioner has not alleged that the separation of chylomicrons, in addition to LDL and VLDL, would otherwise have been obvious.10 Because we construe the claims to require the separation of all three types of lipoproteins defined as “non-HDL” (i.e., LDL, VLDL, and chylomicrons) by the non-HDL separation chemistry layer, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on any of the grounds presented. III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that any of claims 1–18 of the ’397 patent are unpatentable for obviousness. 10 The ’397 patent Specification describes that “reagents used to determine the level of HDL will also react with LDL and VLDL.” Ex. 1001, 1:43–46. Petitioner, however, does not argue that the reagents would not react with chylomicrons or that the removal of chylomicrons is unnecessary to satisfy the claim requirements.” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,087,397

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.