- LG Innotek Co., Ltd. v. Lexington Luminance LLCRehearing deniedPTAB · May 25, 2017 · IPR2017-00052 · APJ Scott B Howard · IPR · Rehearing
The Board denied LG Innotek’s rehearing request, leaving institution denied for claims 1, 2, 4, and 15–18 because the petition did not show Tadatomo taught the claimed sloped profile.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified and “[t]he request must specifically identify all matters the party believes the Board misapprehended or” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“evidence regarding Tadatomo. Although Patent Owner argued that the Petition Translation was biased, we expressly declined to consider that issue. Dec. 20 n.11 (“Because the Petition Translation does not persuade us that Tadatomo teaches ‘a plurality of etched trenches having a sloped etching profile . . . without a prescribed angle of inclination,’ we need not address Patent Owner’s contentions that the Petition Translation is biased and the Reexamination Translation is accurate.” (emphasis added)). Nor did we substitute our judgment for that of Dr. Bottoms and his understanding of the teaching of paragraph 67 of the Petitioner Translation. Instead, the Decision was based on Dr. Bottoms’ and Petitioner’s failure to address the Petition Translation’s other sections that describe Figure 3 as having inclined surfaces or planes, and triangular waves. Dec. 19–20. Stated differently, we assumed that the Petition Translation of paragraph 67 was accurate; however, the arguments and evidence presented in the Petition failed to provide sufficient reasoning and evidence to support Petitioner’s contention that Tadatomo, as a whole, teaches a plurality of etched trenches having a sloped etching profile “without a prescribed angle of inclination” as recited in claims 1 and 15.” slip op. at 4
- BurdenDecided for patent owner
“We are not persuaded. We could not have misapprehended or overlooked something not cited in the initial Petition. Petitioner addressed the “without a prescribed angle of inclination” limitation at pages 18–22 of the Petition and paragraphs 15–26 of Dr. Bottoms’ declaration (Ex. 1003), neither of which cite the additional sections of the Petition Translation or the Reexamination Translation. Instead, Dr. Bottoms and the Petition focus on Figure 3(c) and the description at paragraph 67 of the Petition Translation.5 A request for rehearing is not an opportunity to supplement the initial Petition and rely on evidence not discussed in an initial petition, as we cannot have misapprehended or overlooked evidence not cited in the Petition. See 37 C.F.R. § 42.104(b)(4) (a petition must identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and “where each element of the claim is found in the prior art patents or printed publications relied upon”), 42.22(a)(2) (a petition must include a “full statement of the reasons for the relief requested, including a detailed” slip op. at 7
§ 103 obviousnessPatents in suitUS 6,936,851 - LG Innotek Co., Ltd. v. Lexington Luminance LLCInstitution deniedPTAB · Mar 30, 2017 · IPR2017-00052 · APJ Scott B Howard · IPR · Institution
The Board denied institution for claims 1–4 and 15–18 because the petition did not show a reasonable likelihood of proving obviousness over Tadatomo, Tadatomo and Krames, or Niki.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the record before us, we are not persuaded that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in proving that at least one challenged claim would have been obvious under 35 U.S.C. § 103(a) based on the cited references. Accordingly, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for petitioner
“We are not persuaded that Patent Owner’s proposed construction is consistent with the broadest reasonable construction of the claim limitation. None of the claim constructions cited by Patent Owner state that the sloped etching profile must have a “curved” slope. See Ex. 1014, 15; Ex. 1015, 14– 15; Ex. 1016, 10. We recognize, though, that the phrase “without a prescribed angle of inclination” modifies the entire “etching profile” recited in the claims, not constituent segments, as Patent Owner contends. See Ex. 1014, 15; Ex. 1016, 10. Accordingly, for purposes of this Decision, and after review of the record, we agree with the district courts’ analyses and adopt the claim construction issued in the Amazon litigation, which is the broadest reasonable construction in light of the specification. Thus, for the purpose of this Decision, we construe the phrase “a sloped etching profile . . . without a prescribed angle of inclination” to mean “sloped etched sides without a specified angle of inclination.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“The Specification of the ’851 Patent states that the goal of the disclosed invention is reducing the defect density of the system by guiding defects away from the active layer. See Ex. 1001, 1:10–15, 2:15–22, 3:33– 46, 5:7–11, Abstract. The whereby clause recites that it is the configuration of the plurality of inclined lower portions that produces the reduction in the defect density in the active layer by guiding the defects away from the active layer. Therefore, based on the record before us, we determine that the capability recited in the whereby clause constitutes a structural limitation. Accord Ex. 1015 at 16–20 (determining in the Amazon litigation that the whereby clause is a structural limitation); Ex. 1016 at 16–18 (determining in the Google litigation that the whereby clause is a structural limitation). Accordingly, for purposes of this Decision, and after review of the record, we conclude that the whereby clause is a structural limitation that limits the structure of the inclined lower portions of the first layer. No further explicit construction is necessary at this juncture. Vivid, 200 F.3d at 803 (claims need only be construed “to the extent necessary to resolve the controversy”).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Patent Owner, a person having ordinary skill in the art would have had the following level of skill: “a Master’s degree in Material Science and Engineering, or in a related field, and about two years’ experience with semiconductor fabrication; particularly in group III-V compound semiconductor materials fabrication.” Prelim. Resp. 17–18. The parties’ definitions of one of ordinary skill in the art are substantially similar, and neither party states how any difference in the parties’ articulated levels of skill impacts the proceeding. For purposes of this Decision and based on the current record, we agree with and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 6,936,851
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.