- Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentablePTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20
- Prior constructionPrior construction adoptedDecided for petitioner
“1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18
Patent outcomesUS 9,456,449 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,456,449 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01207 · APJ John R Kenny · IPR · Final written decision
Claims 1–6, 8–10, 15, and 16 are unpatentable as anticipated by Grupp ’483; claims 11, 12, and 14 were not shown unpatentable because Grupp ’483 is not prior art to them.
RulingsFinal written decision- BurdenNot shown unpatentable
“We agree with Patent Owner. “[A p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide5 73; see also 37 C.F.R. § 42.23(b). Here, Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of 5 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. titanium” recited in claims 6, 8, 10, 11, and 14–16, was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015). Accordingly, we will not consider the breadth challenge to a metal oxide comprising an oxide of titanium that Petitioner presented for the first time in its Reply. As for the breadth challenge presented in the Petition—that the pre- 2011 priority applications do not describe the breadth of the class of metal oxides, that challenge is inapplicable here because claims 11, 12, and 14 narrow the recited class to comprising an oxide of titanium, which is a far narrower class. Dr. Schubert provides examples of numerous metal oxides that do not comprise oxides of titanium. Ex. 1022, Schubert Decl. ¶ 94 (hafnium oxide and zirconium oxide); Ex. 1053, Schubert Reply Decl. ¶¶ 18, 19 (see the compounds identified in that paragraph beyond titanium dioxide), 20. Petitioner does not dispute that the pre-2011 priority applications disclose a species within the scope of the recited genus. Pet. 18–22. To the contrary, Petitioner relies on one of the pre-2011 priority applications (Grupp ’483) as disclosing a species (with TiO2) as proof that claims 11, 12, and 14 are anticipated. See id. at 40–44. Thus, we determine that Petitioner has not proven that the pre-2011 priority applications fail to describe the genus of the metal oxide of the interface layer comprises an oxide of titanium. Therefore, Petitioner has not proven that Patent Owner is not entitled to the benefit of the pre-2011 priority applications for claims 11, 12, and 14 due to a lack of written description support. Accordingly, Petitioner has not proven that Grupp ’483 is prior art for those claims.” slip op. at 27
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed
“2. Analysis We agree with Petitioner that the pre-2011 priority applications do not describe the recited genus. To support a claim to a genus, a specification must disclose “either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). Here, the recited genus is an interface layer comprising a metal oxide. Ex. 1001, 18:45–52. It is undisputed that the only species the pre- 2011 priority applications disclose is TiO2, as set forth in the following passage: Two other properties of the dielectric deserve mention. First is the property of the height of the barrier compared to the semiconductor conduction band (for electrons). In making the barrier thinner than a silicide barrier, the tradeoff may be a higher tunnel barrier (e.g., 2 eV for nitride, compared with about half the gap of 0.6 eV for silicide). Spacer layers may be used with lower barriers (e.g., TiO2 has a barrier of less than 1 eV). Nevertheless, even with the higher barrier to electrons, the present inventors have determined that the resistance can still be one hundred times lower than a contact to silicon with a silicide barrier. Id. at 18:1–11 (emphasis added). The pre-2011 priority applications incorporate by reference U.S.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As set forth below, we find that Petitioner has proven that Grupp ’483 anticipates claims 1–6, 8–10, 15, and 16. a. Claim 1 Petitioner argues that Grupp ’483 discloses an electrical junction, citing Grupp 483’s disclosure that “the present invention provides an electrical junction.” Pet. 27 (citing Ex. 1021, Grupp ’483, 3:44–47). Petitioner further argues that Grupp ’483 discloses a region in a semiconductor substrate by describing a source or drain of a transistor. Id. at 28 (citing Ex. 1022, Schubert Decl. ¶ 110). According to Petitioner, Grupp ’483 discloses a metal electrical contact to said region by describing “an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). Petitioner asserts that Grupp ’483 discloses “said region being electrically connected to said metal electrical contact through said interface layer” by describing “the present invention provides an electrical device in which an interface layer is disposed between and in contact with a metal and a semiconductor and is configured to depin the Fermi level of the semiconductor while still permitting current flow between the metal and the semiconductor . . . .” Id. at 29 (quoting Ex. 1021, Grupp ’483, 4:21–26) (emphasis omitted). Petitioner further argues that Grupp ’483 discloses “said interface layer comprising a metal oxide and a semiconductor oxide” by describing an interface layer that includes (1) a passivation layer, which can be a semiconductor oxide; and (2) a separation layer, which can be titanium dioxide, a metal oxide. Pet. 29 (citing Ex. 1022, Schubert Decl. ¶ 114). Petitioner further asserts that Grupp ’483 discloses “being in contact with said region in the semiconductor substrate and said metal electrical contact” by describing “an interface layer is disposed between and in contact with a metal and a semiconductor.” Id. (quoting Ex. 1021, Grupp ’483, 4:21–23) (emphasis omitted). After reviewing Petitioner’s arguments and evidence, we find that Petitioner has proven that Grupp ’483 anticipates claim 1.” slip op. at 40
- ExcludeOther
“We dismiss Patent Owner’s Motion to Exclude as moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 11, 12, and 14. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre- 2011 priority applications for the class of comprising an oxide of titanium that is recited by those claims. Reply Br. 7–12. Because we decided not to consider that belated challenge (see Section III.A.1.b above), the Motion to Exclude is moot.” slip op. at 47
Patent outcomesUS 10,090,395 mixed§ 102 anticipationcites PhillipsPatents in suitUS 10,090,395 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Feb 9, 2022 · IPR2020-01282 · APJ John R Kenny · IPR · Final written decision
Claims 1–5 and 8–10 are unpatentable: claims 1–3 and 8–10 are anticipated by Goodnick, and claims 4 and 5 are obvious. The other challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The Patent Owner Preliminary Response did not comment on the level of ordinary skill in the art. In our Institution Decision, we were persuaded that Petitioner’s description of the level of ordinary skill is appropriate for the subject matter of the ’395 patent and applied it in that Decision. Inst. Dec. 9–10. The Patent Owner Response does not comment on the level of ordinary skill in the art. See generally PO Resp. Thus, we apply the description of the level of ordinary skill set forth in the Petition in this Decision. Ex. 1126, Schubert Decl. ¶ 66.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“Petitioner’s proposed construction by providing the following definition for the phrase “depinning the Fermi level”: By depinning the Fermi level, the present inventors mean a condition wherein all, or substantially all, dangling bonds that may otherwise be present at the semiconductor surface have been terminated, and the effect of MIGS has been overcome, or at least reduced, by displacing the semiconductor a sufficient distance from the metal. Ex. 1101, 3:36–41. In view of this definition in the Specification and the parties’ agreement in pre-institution briefing, we construed the phrase “depin a Fermi level of the metal electrical contact in the vicinity of the junction” as “passivate the semiconductor surface and reduce the effects of metal-induced gap states in the semiconductor” in our Institution Decision. Patent Owner has not requested that we modify that construction. See generally PO Resp. Thus, we maintain it.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“C. An Interface Layer Comprising a Metal Oxide and a Semiconductor Oxide In its Preliminary Response, Patent Owner argued that, in the related litigation, Petitioner and Patent Owner agreed to construe the phrase an “interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Prelim. Resp. 35 (citing Ex. 2009). Patent Owner asserted that the district court adopted that construction. Id. (citing Ex. 2053, 27). In our Institution Decision, we found that the record supported Patent Owner’s arguments. Inst. Dec. 13 (citing Ex. 2009; Ex. 2053, 27). Further, in our Institution Decision, we noted that no party argued that we should construe the phrase differently than the district court. Id. Thus, we construed “an interface layer comprising a metal oxide and a semiconductor oxide” as “said interface layer comprising a layer of a metal oxide and a distinct layer of a semiconductor oxide.” Id. No party has requested that we modify this construction. See generally PO Resp., Pet. Reply. Thus, we maintain it.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taken in context, we agree with Dr. Schubert that an ordinarily skilled artisan would have understood Goodnick to refer to Al2O3 as a distinct layer. Ex. 1126, Schubert Decl. ¶ 85; Ex. 1173, Schubert Reply Decl. ¶ 86. 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. 1121, 5. 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 6–7 (citing Ex. 1168, Goodnick Tr. 55:5–25, 57:19– 58:8, 59:24–60:7, 81:4–8). In view of, inter alia, Dr. Goodnick’s cross- examination testimony, we are persuaded by Dr. Schubert’s testimony that an ordinarily skilled artisan would have understood that distinct layers of Al2O3 and SiO2 are formed. Ex. 1173, Schubert Reply Decl. ¶¶ 85–98.” slip op. at 25
Patent outcomesUS 10,090,395 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,090,395 - 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 - Samsung Electronics Co., Ltd. v. Acorn Semi, LLCSome claims unpatentablePTAB · Jan 12, 2022 · IPR2020-01206 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–4, 13, 20, 22, and 25 were held unpatentable as anticipated by Grupp ’483; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedPriority date awardedMixed
“mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 22
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide 734; see also 37 C.F.R. § 42.23(b). Here, 4 Consolidated Office Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/about-us/news-updates/consolidated-trial-practice-guide-november-2019. Petitioner’s breadth challenge to the written description support for the genus of “the metal oxide of the interface layer comprises an oxide of titanium” recited in claims 6, 8, 10, 11, and 14–16 was part of Petitioner’s prima facie case, which could have, and should have, been presented with the Petition. Thus, Petitioner could not properly wait until its Reply to specifically challenge the description support for the breadth of that class in the pre-2011 priority applications. See Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019). Accordingly, we will not consider the breadth challenge to oxides of titanium that Petitioner presented for the first time in its Reply.” slip op. at 25
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Petitioner’s expert, Dr. Schubert, identifies a large number of metal oxides and multiple metal oxides that is expanded by multiple equilibrium species and notes that the metal oxide genus would be even further expanded to include non-equilibrium species. Ex. 1047, Schubert Decl. 2 ¶¶ 18–22. Dr. Schubert further emphasizes the significant variation in physical and chemical properties of such metal oxides. Id. at ¶¶ 27–51. Much of Dr. Kuhn’s analysis is premised on her assessment of the mental steps that an ordinarily skilled artisan theoretically might have taken after reviewing the minimal disclosure in the ’423 patent. The ’423 patent does not discuss any properties of metal oxides (other than the lower barrier of the metal oxide TiO2) or design considerations concerning the selection of particular oxides to use in the claimed structure, particularly in the context of MIGS separation. Dr. Kuhn cites very little, if any, evidence to support her testimony regarding the knowledge of an ordinarily skilled artisan. Thus, we do not credit this analysis as showing that an ordinarily skilled artisan would have found that the inventors of the pre-2011 priority applications possessed the recited genus. See Ariad, 593 F.3d at 1352 (a description that merely renders the invention obvious does not satisfy the written description requirement); Power Oasis Inc. v. T-Mobile USA, 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”) (quoting In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002), quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)); Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . . Rather, it is a question whether the application necessarily discloses that particular device”) (emphasis in original).” slip op. at 21
- ExcludeOther
“Patent Owner’s Motion to Exclude is moot in light of our determination regarding Petitioner’s written description challenge to Patent Owner’s benefit of its pre-2011 priority applications for claims 6, 8, 10–12, 15–19, 26–29. In particular, Petitioner relies on the testimony at issue to support its belated challenge to the breadth of written description support in the pre-2011 priority applications for the oxide of titanium class recited by those claims. Pet. Reply7–12. Because we decided not to consider that belated challenge (see Section III.E.1.b), the Motion to Exclude is moot.” slip op. at 47
Patent outcomesUS 9,905,691 mixed§ 102 anticipationPatents in suitUS 9,905,691 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision
Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Veeam Software Corp. v. Hybir Inc.Some claims unpatentablePTAB · Dec 2, 2021 · IPR2020-01037 · APJ John R Kenny · IPR · Final written decision
Claims 1, 2, 5, 6, 8–15, 18, 19, 21–29, and 34 are unpatentable as obvious over Field and Anderson; claims 3, 4, 7, 16, 17, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“regarding the level of ordinary skill in the art, and Petitioner does not address our preliminary finding in its Reply. Accordingly, we see no reason to disturb that finding, and, therefore, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, Software Engineering, or an equivalent field, as well as at least three to five years of academic or industry experience in the fields of data storage, data backup, data restoration, data replication and deduplication, and/or data synchronization.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, we find that the record does not support construing” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“away and (2) whether one of ordinary skill in the art would have been motivated to not transmit an inventory with multiple signatures due to a concern with backup efficiency. With respect to whether Field teaches away, Patent Owner’s argument is premised, in part, on a requirement derived from its proposed construction of “inventory”—that the claimed “inventory” must include additional data, such as filenames and directories. As discussed above, we do not agree with Patent Owner’s construction. Similar to Patent Owner’s earlier argument of a teaching away, Patent Owner fails to identify anything in Field that criticizes, discredits, or otherwise discourages one of ordinary skill in the art from creating an inventory, as properly construed. Accordingly, we do not find that Field teaches away from using or creating an inventory.” slip op. at 81
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“144, 202; Pet. Reply 20–21; Ex. 1024 ¶¶ 59–62. Accordingly, we determine that Petitioner has not proven that claims 3 and 16 would have been obvious over Field and Anderson. Ex. 2008 ¶¶ 129–130.” slip op. at 101
Patent outcomesUS 8,051,043 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,051,043 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00878 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 are unpatentable; claims 3, 8, 16, 19, 24, and 30 were not shown unpatentable.
RulingsFinal written decision- BurdenMixed
“35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are unpatentable and that Petitioner has not shown, by a preponderance of the evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would include someone who had, at the priority date of the ’897 Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing multi-lens optical systems. Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems for manufacturing, and would have been familiar with the specifications of lens systems and their fabrication. In addition, a POSITA [person of ordinary skill in the art] would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19). We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s assessment of the level of skill in the art because it is consistent with the ’897 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner argues that no “dispute between the parties in this IPR depends on the construction of EFL, TTL, or of any other claim term [and] submits that the Board should refrain from construing any terms in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner does not respond to this argument. See generally Pet. Reply. We agree with Patent Owner. If we were to adopt either construction, it would not change the determination made in this Decision. Thus, we decline to construe any claim terms for purposes of this Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40. Patent Owner does not present arguments related to this ground. See generally PO Resp. For the reasons that follow, we are persuaded that the evidence supports Petitioner’s arguments and thus, Petitioner establishes by a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29 are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.” slip op. at 17
Patent outcomesUS 10,330,897 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,330,897 - Apple Inc. v. Corephotonics, Ltd.Some claims unpatentablePTAB · Nov 2, 2021 · IPR2020-00877 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 2, 5–7, 11–13, 15, 16, 18, 20, and 21 are unpatentable as obvious; claims 3 and 4 were not shown unpatentable because the May combination was insufficiently supported.
RulingsFinal written decision- BurdenMixed
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum, 829 F.3d at 1380. Thus, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art render the challenged claims unpatentable. slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends [A] person of ordinary skill in the art (“POSITA”) would include someone who had, as of the priority date of the ’840 Patent (i) a Bachelor’s degree in Physics, Optical Sciences, or equivalent training, as well as (ii) approximately three years of experience in designing miniature lens systems for mobile device applications. . . . Such a person would have had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens systems, and would have been familiar with the specifications of lens systems, especially lenses configured for use in mobile devices, such as cell phones. . . . In addition, a POSITA would have known how to use lens design software such as Code V, Oslo, or Zemax, and would have taken a lens design course. . . . Such a POSITA would have been familiar with photographic lenses and with mechanical and electronic devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6–7 (citing Ex. 1003, 10). Patent Owner “applies the level of ordinary skill in the art set forth in the petition and used by the Board in its Institution Decision.” PO Resp. 3 (Inst. Dec. 8). We determine that the level of ordinary skill in the art proposed by Petitioner is consistent with the ’840 patent and the asserted prior art. We apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Independent claim 1 recites “the Telephoto lens unit and the Wide lens unit having, respectively, total track length (TTL)/effective focal length (EFL) ratios smaller and larger than 1 and defining separate Telephoto and Wide optical paths.” Ex. 1001, 19:48–52. Petitioner asserts that “a POSITA would find, in light of the specification, the term ‘total track length (TTL)’ to include ‘the length of the optical axis spacing between the object-side surface of the first lens element and the image plane.’” Pet. 8 (citing Ex. 1003, 20) (emphasis omitted). Petitioner further asserts that, although the Specification of the ’840 patent does not expressly define EFL, “its meaning is well known in the art, as exemplified in Li ([Ex.] 1007), which states that ‘[t]he focal length of a lens assembly [is] also referred to as the effective focal length[.]’” Pet. 8–9 (quoting Ex. 1007, 2:59–61) (alterations in the original). Patent Owner “does not believe that any terms require construction to resolve the disputes addressed in this response.” PO Resp. 3. We do not discern a dispute as to the claim terms TTL and EFL in this proceeding and as such, we need not expressly construe these terms. Nidec Motor Corp., 868 F.3d at 1017. .” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“(2) Discussion of Rationale for Combining We have reviewed the record developed at trial including the cited portions of Parulski, Huang, and Tang. We determine that Petitioner has supported its seven reasons for combining Parulski, Huang, and Tang with sufficient rational underpinning evidenced by the exhibits cited above. Patent Owner does not dispute Petitioner’s rationale for combining. See generally PO Resp. We determine that Petitioner has shown that an ordinarily skilled artisan would have been motivated to combine Parulski, Huang, and Tang, and that such motivation is supported by sufficient rational underpinning. Based on the complete record developed at trial, we determine that cited portions of Parulski, Huang, and Tang sufficiently support Petitioner’s contentions with respect to the telephoto lens unit and the wide lens unit as claimed.” slip op. at 22
Patent outcomesUS 10,288,840 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,288,840 - Unified Patents, LLC v. Targeted Radio LLCSome claims unpatentablePTAB · Sep 22, 2021 · IPR2020-00681 · APJ John R Kenny · IPR · Final written decision
Claims 1 and 3–9 are unpatentable as obvious; claim 2 was not shown unpatentable because the Estese-based grounds did not establish recurring location reports to the server.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“degree in electrical engineering, computer science, or a related subject or the equivalent, and two years of experience working with streamed content, including targeted advertising.” Pet. 8 (citing Ex. 1001, 1:20-60; Ex. 1011 ¶ 25). Further, Petitioner asserts that more relevant experience could compensate for less education, and vice versa. Id. (citing Ex. 1011 ¶ 25). Patent Owner argues an ordinarily skilled artisan would have had “at least a bachelor’s degree in electrical engineering, computer engineering, or an equivalent discipline, and some work experience with streamed content.” PO Resp. 20 (citing Ex. 2002 ¶ 38). Patent Owner also asserts that more relevant experience could compensate for less education, and vice versa. Id. (citing Ex. 2002 ¶ 38). According to Patent Owner, Petitioner’s expert, Anthony J. Wechselberger, admitted that an ordinarily skilled artisan need not have advertising-specific experience. Id. at 20–21 (quoting Ex. 2001, 19:15–21). We adopt Patent Owner’s proposed definition for an ordinarily skilled artisan. See Ex. 2001, 19:15–21. We, however, would reach the same conclusions if we were to adopt Petitioner’s.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“b. Analysis We adopt Petitioner’s proposed construction for advertising break: “a break in the program content (the ‘Internet radio stream’) where advertising content was or can be inserted.” Reply 2. The Specification and challenged claims support Petitioner’s proposed construction. First, both parties agree that an advertising break is a type of program break. PO Resp. 14; Reply 2. Although the Specification does not expressly define the term “program break,” the Specification uses the term to refer to a break during which content which is distinct from a program was or can be inserted. For example, the Specification discloses that audio programs in an Internet radio stream “will normally include program breaks during which audio content that is distinct from the program content is delivered.” Ex. 1001, 1:34–36 (emphasis added). The Specification further describes that the “present invention seamlessly selects content for outputting on a mobile device during a program break in an Internet radio stream using mobile device location information and program break markers.” Id. at 1:64–67 (emphasis added). The Specification has additional disclosures of selecting non-program content for insertion in a program break. See Ex. 1001, 1:64–4:5, 7:37–48, 7:62–66, 8:35–39, 9:10– 50, 9:65–10:11, 10:12–16, Figs. 6 (step 635), Fig. 7 (step 715), Fig. 8 (step 840).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“ii. Analysis We agree with Petitioner that an ordinarily skilled artisan would have been motivated to combine Rittmaster’s and Duvall’s teachings, would have had a reasonable expectation of success in making that combination, and would not, as Patent Owner argued, have had to substantially reconstruct and redesign Rittmaster to do so. We credit Mr. Wechselberger’s testimony that an ordinarily skilled artisan would have been motivated to combine the teachings of Rittmaster and Duvall with a reasonable expectation of success. Ex. 1011 ¶¶ 46–50. As Mr. Wechselberger explains, Duvall provides the details of how to select an advertisement from the stored advertisements using a duration indicator combined with other factors, such as location. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. Because Rittmaster’s similar system also selects advertisements based on the user’s location and other criteria to provide advertisements that fit the programming break, an ordinarily skilled artisan would have expected Duvall’s teachings to work in Rittmaster’s system. Ex. 1011 ¶ 50; Ex. 1007 ¶ 132. Duvall provides further details on how to select content that fits the programming breaks, as suggested by Rittmaster. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. Duvall discloses how to add or implement a variable duration indicator to a system for providing targeted content to users, like the system of Rittmaster. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. And an ordinarily skilled artisan would have had a reasonable expectation of success in applying Duvall’s teachings to Rittmaster’s system because Duvall uses local storage of the advertising options in its client-side system in a manner similar to the storage of advertisements in the server-side system of Rittmaster. Ex. 1011 ¶ 50; Ex. 1008, 8 (“local cache”); Ex. 1007, Fig. 2, storage device 13, ¶ 56 (“downloads to the user device”).” slip op. at 34
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We credit Mr. Wechselberger’s testimony that an ordinarily skilled artisan would have been motivated to combine the teachings of Rittmaster and Duvall with a reasonable expectation of success. Ex. 1011 ¶¶ 46–50. As Mr. Wechselberger explains, Duvall provides the details of how to select an advertisement from the stored advertisements using a duration indicator combined with other factors, such as location. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. Because Rittmaster’s similar system also selects advertisements based on the user’s location and other criteria to provide advertisements that fit the programming break, an ordinarily skilled artisan would have expected Duvall’s teachings to work in Rittmaster’s system. Ex. 1011 ¶ 50; Ex. 1007 ¶ 132. Duvall provides further details on how to select content that fits the programming breaks, as suggested by Rittmaster. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. Duvall discloses how to add or implement a variable duration indicator to a system for providing targeted content to users, like the system of Rittmaster. Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. And an ordinarily skilled artisan would have had a reasonable expectation of success in applying Duvall’s teachings to Rittmaster’s system because Duvall uses local storage of the advertising options in its client-side system in a manner similar to the storage of advertisements in the server-side system of Rittmaster. Ex. 1011 ¶ 50; Ex. 1008, 8 (“local cache”); Ex. 1007, Fig. 2, storage device 13, ¶ 56 (“downloads to the user device”). We do not credit Dr. Rhyne’s testimony that combining the teachings of Rittmaster and Duvall would have required a substantial redesign of Rittmaster. Ex. 2002 ¶¶ 90–92.11 Regarding this issue, Dr. Rhyne testifies: 11 In paragraph 90, Dr. Rhyne refers to the substantial reconstruction of Estese, but the reference to Estese appears to be a typographical error. This section of his declaration addresses the combination of Rittmaster and Duvall. Rittmaster would require fundamental reconstruction to incorporate Duvall’s content identification list information 122 because Duvall’s content identification list information 122 only identifies advertisement data already embedded in a data stream. Rittmaster teaches using time frames during which content such as an advertisement may be inserted. See Rittmaster at [0132]; Ex. 2001 at 33, lines 20–24. Like Estese, Rittmaster is a system where time frames or windows allow customization by interleaving location-based advertisements into the frame before delivering it to the recipient. Rittmaster at [0132]. To use Duvall’s content identification list information 122, which identifies advertisement spots that are already part of a media stream, would thus require replacing the frame structure of Rittmaster with a full media stream that could then be overwritten—or in the terminology of Duvall, “muted”—in specific locations when told to by content identification list information 122.” slip op. at 34
Patent outcomesUS 8,948,684 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,948,684
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.