- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Apple Inc. v. Theta IP, LLCSome claims unpatentablePTAB · Nov 25, 2025 · IPR2024-00819 · APJ Russell E Cass · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Behbahani, Leete, and Tan; claim 20 was not shown unpatentable because the references did not teach its required comparison of desired and interferer signal strengths.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner thus proposes a Master’s degree with two years of experience, while Patent Owner proposes a Bachelor’s degree with five years of experience. At the institution stage, we did not see a material difference in the proposals given that both parties also indicate that more education could substitute for less experience and vice versa, and thus adopted Patent Owner’s proposal. Inst. Dec. 9. We requested that the parties address during trial if either believed that the choice of one proposal over the other would make a difference in the patentability analysis. Id. Neither party has done so. Accordingly, because nothing in the record persuades us that our preliminary finding in the Institution Decision was incorrect, and because neither party has challenged our finding, we maintain our adoption of Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Here, as in the Director’s example, Petitioner advanced a narrower construction of the dynamic limitations before the district court, which the district court declined to adopt. Pet. 9; Ex. 2015; Ex. 2025, 31–47. Instead, the district court adopted a “plain-and-ordinary meaning” construction, which Patent Owner proposed. PO Resp. 38; PO Sur-reply 10 n.2; Ex. 2015; Ex. 2025, 31–47. In the Petition, Petitioner proposed applying the plain and ordinary meaning construction that had already been preliminarily adopted by the district court. Compare Pet. (filed May 1, 2024) with Ex. 2015 (preliminarily adopting plain and ordinary meaning construction on March 25, 2024). Applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR. Thus, we give the dynamic limitation its plain-and-ordinary meaning, which is “adjusting during operation based—at least in part—on information gained during operation.”” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“In our Institution Decision, we stated that we “will give the term ‘signal path’ its ‘plain and ordinary meaning’ and not limit it only to analog components, as the district court found and the parties agree.” Inst. Dec. 11. Given that the parties continue to agree on this point, we see no need to depart from the construction we adopted in our Institution Decision. Moreover, applying Revvo, we find that Petitioner had a sufficient reason for advancing the broader, court-adopted construction in this IPR for the same reasons as discussed above. In this proceeding, the dispute between the parties concerns the application of this and the surrounding claim language (i.e., “in the receiver signal path,” “in the signal path”) to the disclosures in Behbahani. See PO Resp. 43–45. Therefore, we will provide further discussion in the context of the parties’ arguments regarding Behbahani below. However, we agree with Patent Owner’s plain reading of the claim language to the extent it requires adjusting an impedance and/or bias current of a circuit while it is in the signal path. See Id. at 50–51.” slip op. at 14
- Expert testimonyPatent owner expert discountedOther
“Patent Owner’s arguments generally fail to address why Behbahani’s Variable Bandpass Filter Block does not teach the recited “plurality of circuits [comprising/including] . . . a filter,” and instead focus on why the low-pass and high-pass filter circuits do not teach the limitation, which is not Petitioner’s position. As stated above, we agree with Patent Owner’s plain reading of the claim language – i.e., that it “requires adjusting the bias, in or of a circuit.” See PO Resp. 49. However, Patent Owner’s reading of the claim does not persuasively address why the Variable Bandpass Filter Block does not teach the recited “circuit.” We have reviewed Dr. Larson’s cited testimony and disagree with Patent Owner that he provided “a well-supported opinion . . . as to why a [person of ordinary skill in the art] would not understand the entire bandpass box to be a single ‘circuit,’ or to reflect variation in ‘an impedance’ or ‘a bias’ in the claims.” Sur-reply 4 (citing Ex. 2020 ¶¶ 46–48, 71, 74–83). Dr. Larson testifies that the ’330 patent (which has the same specification as the ’164 patent) “teach[es] these adjustments [that dynamically change operating parameters] as changes effected in a single circuit block.” Ex. 2020 ¶ 46 (citing, e.g., Ex. 1001, Figs. 8A, 9A, 8:20–25, 8:36–39, 9:36–59, 10:1–18 (emphasis added)). Dr. Larson does not provide further explanation as to what he means by a “single circuit block,” but relies on Figures 8A and 9A, which show a “function block,” and other disclosures referring to a “function block.” See id. There is no dispute that the recited “circuit” in the receiver signal path is referring to these “function blocks.” See Tr. 22:20–23:4. The ’164 patent states that Figure 8A, which includes function block 820, is “an embodiment of the present invention” 8:28–30. Similarly, Figure 9A, which includes function block 920, “illustrate[s] one of the possible power saving techniques.” Id. at 3:41–42. The ’164 patent describes that “[f]unctional block 820 . . . may be a filter, mixer, amplifier, or other circuit or circuits in a wireless transceiver or other electronic circuits or system.” Id. at 8:30–33 (emphasis added). Based on these disclosures, we are not convinced that Function Block 820 or 920 cannot include multiple filters in a Variable Bandpass Filter Block, or that Behbahani’s Variable Bandpass Filter Block does not teach the recited “circuit.” Dr. Larson also relies on Figure 6 of the ’164 patent to conclude that” slip op. at 45
Patent outcomesUS 11,564,164 mixedClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,564,164 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jul 9, 2024 · IPR2023-01296 · APJ Jason W Melvin · IPR · Final written decision
Claims 56–64, 66, 68–72, 74, and 76–87 are unpatentable as obvious; claims 65, 67, 73, and 75 were not shown unpatentable because the asserted grounds did not establish the required non-contiguous LED cluster.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that an ordinarily skilled artisan “would have had a bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶ 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 10. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Some of Petitioner’s and Patent Owner’s arguments depend on claim scope, and we address those implicit claim-construction arguments below.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“claim construction: that a controller must associate a target’s identity with a prior target. But the claim language neither imposes nor supports any such requirement. Claim 72 is illustrative, in that it expressly states that the disputed language regarding “illumination provided to the target” is achieved “by repeating the determination of target location, selection of the 10 We agree with Petitioner that the Petition’s reference to “Beam’s system” is a clear typographical error and that the Petition’s substance and citations refer to Karlsson, not Beam. See Pet. Reply 20. cluster and variance to illumination provided to the target, relative to the laterally adjacent areas, based on the subsequent data.” Ex. 1035, 12:8–11. That supports Petitioner’s view that a system can “maintain a variance of the illumination provided to the target” by iteratively performing the “determine,” “select,” and “vary” steps. Claim 80 does not expressly state that steps are repeated, but instead requires the processor be able to identify “a plurality of positions associated with the target” and “change, responsive to the positions associated with the target, first light associated with” LEDs aimed towards the target as the target moves. Id. at 13:30–40. That language, like claim 72’s, does not impose an additional requirement of correlating a detected target to prior detected targets. Rather, it requires that a given target results in multiple identified positions that produce light changes. Based on our understanding of the claim language, Patent Owner’s assertion that, in Karlsson, “[e]ach subsequent detection of light is performed anew and has no relationship to a prior detection and may or may not correspond to the same target” (PO Resp. 52) does not preclude the claim from reading on Karlsson. As Petitioner has identified, the claim language reads on Karlsson’s system when a particular vehicle results in multiple, subsequent detections at multiple positions. Pet. 74. Although Patent Owner poses an alternative situation in which Karlsson’s system might detect other objects rather than the particular vehicle first detected (see PO Resp. 50–51), that does not undermine Petitioner’s showing because the claims do not require that a system perform only as claimed. That is, even if Karlsson’s system detects and accommodates additional targets, if a single target results in multiple light configurations, the claim language is satisfied. And Patent Owner concedes that Karlsson’s system produces “a darkened area that changes position over time due to movement of the vehicle providing light relative to various light sources.” Id. at 52. That admission is consistent with Karlsson’s disclosure that its system adapts to sensed objects by “intermittently, repeatedly controlling” its light beam. Ex. 1010, 2:30–3:6. We find that when Karlsson’s system controls light to prevent glare to an oncoming vehicle, that would result in the processor identifying a plurality of positions associated with the vehicle and varying light associated with LEDs aimed toward the vehicle. Thus, the record supports Petitioner’s position that claims 72’s and 80’s disputed language reads on Karlsson. 5. “select a second, different cluster . . . directed towards the other vehicle”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. 56 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 110 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 156 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 59–61. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17– 110:4. While there may be some tradeoffs involved in using a different camera location than Nakamura discusses, those tradeoffs would be balanced by the benefits that Karlsson discloses from locating a camera with each headlamp. Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented as a lighting change by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have had reason to modify Karlsson’s system with Nakamura’s teachings regarding capturing and using image coordinates as summarized above.” slip op. at 21
Patent outcomesUS 9,955,551 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,955,551 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jun 18, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Final written decision
Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that an ordinarily skilled artisan “would have had a bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims. Patent Owner asserts that the reexamination declaration correlated objective evidence with the “Predictive Curve Illumination” claims (PO Resp. 70–71), but cited portion of the declaration does not address that claim feature (see Ex. 2023, 728–34). Accordingly, Patent Owner has not established a nexus with the dependent claims. That the praised characteristics were found in the prior art is consistent with Patent Owner’s asserted evidence, which largely pertains to efforts to change U.S. regulations to permit the use of adaptive headlight technology. See Pet. Reply 28; Ex. 1053 ¶¶ 198–199. Thus, Patent Owner’s evidence does not support nonobviousness.” slip op. at 22
Patent outcomesUS 9,955,551 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,955,551 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15
- Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner
“Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21
Patent outcomesUS 6,634,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,634,770 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, 85–86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“In the Reply, Petitioner uses the Krames declaration (Ex. 1028) to argue, for example, that a person of ordinary skill in the art would have used a lower amperage than the 1.5 A dc that Patent Owner’s Response focuses on. Reply 8 (citing Ex. 1028 ¶ 22). This use of the Krames declaration is timely because it responds to an argument Patent Owner makes in the Patent Owner Response. 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in . . . patent owner response.”). As to relevancy and whether the Krames declaration is applicable to the facts of this case, the issues at hand are (1) whether or not a person having ordinary skill would have had reason to use the Krames LED with Begemann with a reasonable expectation of success and (2) whether or not the Krames LED is capable of outputting light at greater than about 40 milliwatts. Again, we emphasize that claim 21 does not recite a method where the LED within the recited semiconductor light source actually outputs greater than about 40 milliwatts. The Krames declaration is relevant to the facts of this case because the declaration has bearing on whether or not a person of ordinary skill in the art would have combined the Krames reference’s LED with Begemann’s lightbulb design. See, e.g., Ex. 1028 ¶ 22. Patent Owner argues that evidence must be relevant to motivation to combine “an LED chip from the Krames article (operating at 1.5 amps to produce 170 milliwatts of output)” but claim 21 has no “operating at 1.5 amps to produce 170 milliwatts of output” requirement. What is relevant is that Krames discloses a single chip that has the capability of outputting more or less light depending on operating conditions. Pet. Opp. 3; see also Ex. 1008, 8 (providing that Figure 12 of the Krames reference is described as illustrating “[l]ight output vs. current characteristic of a blue … 1x1 mm2 AlGaInN LED in a power package, compared to a conventional AlGaInN LED in a 5 mm lamp a package”). Because claim 21 does not require actually running the recited LED at any particular wattage or amperage, it is appropriate for the Krames declaration to rebut Patent Owner’s argument that a person of ordinary skill would not have considered using the Krames LED with Begemann at high amperage by explaining that a person of ordinary skill in the art would have considered using the exact same Krames LED with Begemann at a low amperage instead and that at this lower amperage the Krames LED would generate an amount of heat that would be easily dissipated by Begemann’s lamp while still providing an optical output of “greater than about 40 milliwatts” as recited by claim 21. Ex. 1028 ¶¶ 23–24 (citing Ex. 1008, 8). The fact that the Krames LED is configured to run at the high amperage if desired for a different application does not negate the rationale for combining the Krames LED to run at a lower amperage.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Prior constructionPrior construction adoptedDecided for patent owner
“Patent Owner’s claim construction is well-supported by the record including the reasoning provided by the California and Delaware district courts. Ex. 2002, 19–21 (California district court explaining why the “reflective layers” must be distinct layers based on how claim 8 is structured and also explaining why the amount of reflection must be non-negligible); Ex. 2003, 2, 13 (Delaware district court explaining why reflection has to be more than negligible but need not reflect more light than the light absorbed or transmitted). We, thus, agree that “first and a second reflective layers . . . 10 Patent Owner’s proposed claim construction combines various statements made by the district courts into one statement. Resp. 15 (citing Ex. 2002, 19–21; Ex. 2003, 2, 13). serving to reflect light emitted by said active layer” means that the “first and second reflective layers are distinct from each other and reflect more than negligible light.” We further note that the preponderance of the evidence supports that as little as one percent light reflectance is “non-negligible” in this context. Reply 4; also Ex. 1032, 188:7–14 (Patent Owner’s witness, Dr. Shealy, testifying that reflection “on the order of one percent” would be more than negligible); see also Tr. 53 (counsel for Patent Owner agreeing that Dr. Shealy opined that “three percent reflection is enough to be non-negligible”).” slip op. at 21
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Final written decision
Claims 21–40, 42–44, 47–49, 52–53, 56–59, 62–63, 65–68, 71–73, 77–78, 81–82, and 85–91 are unpatentable over Begemann, Krames, and Allen; claim 41 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the facts. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the 13 We note that Dr. Lebby does not directly state when the Proceedings were widely available. See Sur-Reply 14. evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 25. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 13–14. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 25
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22
Patent outcomesUS 6,465,961 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,465,961 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01279 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3 and 13 are unpatentable as anticipated by Goodnick; claim 4 is unpatentable as obvious over Goodnick and Jammy. The other challenged claims were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“resistivity” and “specific contact resistance” to be interchangeable. Dec. to Inst. 12. Neither party disagrees with this construction, and we apply the same construction for purposes of the Decision.” slip op. at 8
- Expert testimonyMotion to exclude, deniedDenied
“Although Patent Owner contends Dr. Goodnick’s declaration did not open the door for general questioning about metal oxides (PO Opp. 2–3), we agree with Petitioner that the proper scope of cross examination includes Dr. Goodnick’s understanding of what constitutes a distinct layer. A primary issue raised by Patent Owner against Petitioner’s challenge that Goodnick anticipates is that, notwithstanding its use of the term layer, Goodnick does not teach distinct layers that are required by the claim. See Section VI.B. One of those layers is a metal oxide layer (Ex. 1101, claim 1), in particular a titanium oxide layer (claim 6). In view of Dr. Goodnick’s checkerboard analogy in his declaration, it was proper for Petitioner to question Dr. Goodnick about the extent of materials in the checkerboard. Both parties argue there may be implications of Dr. Goodnick’s testimony for purposes of infringement litigation. See Pet. Opp. 4–6; PO Reply 3–4. We do not address those implications. The issue before us is whether Goodnick would have taught or suggested to a person of ordinary skill the limitations of the claims, which the parties agree include distinct layers of metal oxide and other semiconductor oxide. See Section VI.B. As Dr. Goodnick testified that his article did not teach such distinct layers, it was proper for Petitioner to explore Dr. Goodnick’s views concerning the composition of a layer during cross examination. In consideration of the above, Patent Owner’s motion to exclude the Goodnick Metal Oxide testimony is denied.” slip op. at 48
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taken in context, we agree that a person of ordinary skill would have understood Goodnick to refer to Al2O3 as a distinct layer. Referring to Fig. 8(a), Goodnick states that in an unheated sample with an air grown oxide “[i]t appears that Si has diffused into the Al and collected at the Al2O3- Al interface at the surface. No buildup of Al2O3 is seen at the Al-Si interface.” Ex. 1116, 953. Noting that Fig. 8(b) is a profile of an unheated sample with 30Å of SiO2 at the interface, Goodnick states “[i]n contrast to the air exposed sample, an Al2O3 layer exists at the Al-SiO2-Si interface.” Id. Petitioner notes that, on cross examination, Dr. Goodnick acknowledged (i) that the Al metal layer would diffuse into the SiO2 interface layer and reduce the portion of the SiO2 layer nearest the Al layer to Al2O3, (ii) that once the Al2O3 layer forms, it would be difficult for aluminum atoms to diffuse through the Al2O3 layer to continue reaction with the SiO2 layer, and (iii) because the reaction is self-limiting, a portion of the original SiO2 layer would remain once the reaction forming the Al2O3 layer stopped. Pet. Reply 5–6 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7). In view of, inter alia, Dr. Goodnick’s cross examination testimony, we are persuaded by Dr. Schubert’s testimony that a person of ordinary skill would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173 ¶¶ 85–98.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“that “the semiconductor region comprises an n-typed doped source or drain of a transistor.” Acknowledging that Goodnick “does not expressly disclose that its n-doped silicon semiconductor region ‘comprises an n-type source or drain of a transistor,’” Petitioner cites Jammy as disclosing this feature. Pet. 27. According to Petitioner, a person of ordinary skill would have combined the teachings of Goodnick and Jammy because Goodnick describes contact metallization processes for semiconductor devices and Jammy describes a semiconductor device. Id. at 28. Patent Owner asserts that Petitioner’s challenge to claim 4 based on the combined teachings of Goodnick and Jammy fails because it is premised on Goodnick teaching a stratified layer of Al2O3 distinct from SiO2. PO Resp. 60. As discussed above, we find that a person of ordinary skill would have understood Goodnick to disclose this feature. See Section VI.B. In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill would have had reason to combine the teachings of Goodnick and Jammy and that the combined teachings of Goodnick and Jammy would have suggested the limitations of claim 4 to a person of ordinary skill in the art.” slip op. at 24
Patent outcomesUS 9,905,691 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,905,691
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.