• NEC Corporation / Nokia Corporation et al. v. Neptune Subsea IP LimitedAll claims unpatentable
  PTAB · Nov 25, 2019 · IPR2018-01157 · APJ Jason W Melvin · IPR · Final written decision

  Claims 13–20 are unpatentable as obvious over Yamamoto and Nishimoto; the Chowdhury and Webb grounds, with or without Tanaka162, do not establish unpatentability.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableDecided for petitioner

    “III. CONCLUSION For the foregoing reasons, we determine Petitioner has shown by a preponderance of the evidence that each of claims 13–20 is unpatentable.” slip op. at 26

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties submit and we agree that there is no need to construe any term to resolve the issues in this decision. See Pet. 7–9; PO Resp. 6; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “e. Summary For the reasons described above, we find that a person of ordinary skill in the art at the time of invention would have had reason to combine Yamamoto’s and Nishimoto’s teachings as asserted by Petitioner and that the combination teaches all of claim 13’s limitations. Accordingly, Petitioner has shown by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Yamamoto and Nishimoto.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “tunable compensators is a contingent argument, applicable only if one reads claim 13 to require a certain transmission rate. PO Resp. 21–25. We do not read Petitioner’s argument as so constrained. Rather, we understand Petitioner to argue that a desire for higher transmission speeds would drive skilled artisans to use solutions such as Nishimoto’s tunable compensators, particularly in light of Nishimoto’s guidance regarding the ability to achieve high speeds with the system. See Pet. 21–23. In that regard, we agree with Petitioner that the increase in transmission rates from Yamamoto’s to Nishimoto’s disclosures would have given skilled artisans reason to consider Nishimoto’s teachings. Pet. Reply 16–18 (citing Ex. 1005 8:9–11; Ex. 1007, 12:37–39). As Petitioner points out, Nishimoto specifically discloses that higher-speed transmissions were more sensitive to dispersion. Pet. Reply 17 n.9. Thus, we find the desire for higher transmission speeds and the need for techniques such as taught by Nishimoto would have given skilled artisans reasons to combine Nishimoto’s disclosure regarding dispersion compensation with Yamamoto’s system to achieve Yamamoto’s goals regarding the dispersion maps for multiple channels. Further, Petitioner does not rest entirely on the desire for high-speed operation. Petitioner argues also that using Nishimoto’s adjustable compensators and feedback control would “yield an improved WDM system capable of automatic compensation for degradation of the optical signal waveform caused by both wavelength dispersion and polarization mode dispersion of the optical transmission path, resulting in further reduced size and cost.” Pet. 16 (citing Ex. 1003 ¶¶ 99, 101; Ex. 1007, 3:41–60, 4:3–58, Figs. 17, 20, 21), 29–30 (quoting Ex. 1007, Abstract, 3:37–40, 6:56–64, 7:53–56, 11:41–46, 17:53–55, 17:59–60; citing Ex. 1003 ¶¶ 114–115); accord id. at 14 (quoting Ex. 1007, 3:19–25). Patent Owner recognizes that basis for the combination but argues that the record lacks evidence to support Petitioner’s claim of reduced size and cost. PO Resp. 25–26. Patent Owner does not contest that the modification would give Yamamoto’s system the ability to automatically compensate for signal degradation from dispersion. Nishimoto discloses that as transmission speeds increase, “changes in wavelength dispersion characteristics due to temperature changes of optical fiber; and the influence by polarization mode dispersion” both “can not be neglected,” therefore requiring a system for automatically compensating for wavelength dispersion and polarization mode dispersion,” as taught by Nishimoto. Ex. 1007, 1:34–41. We find that a skilled artisan would have had reason to make the combination because the system would gain capability for automatic compensation. Regarding reduced size and cost resulting from the combination, Patent Owner does not provide any contrary evidence and we conclude that Nishimoto’s statements regarding the benefit of its invention also would have motivated skilled artisans to make the combination. See Ex. 1007, 3:17–26 (“to thereby provide a dispersion compensating apparatus of reduced sizes at a reduced cost”).” slip op. at 18

  Patent outcomesUS 8,351,798 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,351,798
• Lifescan Global Corporation v. PHC Holdings CorporationInstitution denied
  PTAB · Nov 18, 2019 · IPR2019-01127 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted prior art.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2018). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we deny the Petition, and do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “We agree with Patent Owner that the Petition lacks requisite clarity and does not satisfy Petitioner’s burden of identifying “how the construed claim is unpatentable under the statutory ground on which petitioner challenges the claims, . . . [by] specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4); see also 37 C.F.R. § 42.22(a)(2) (requiring “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.”). According to our Trial Practice Guide, “parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012). Here, Petitioner dedicates two pages to its discussion of how the challenged claims would have been obvious over the combined teachings of eight references. Pet. 68–69. Petitioner does not detail how each of the eight references are to be combined or which teachings from each reference are relied upon to suggest each limitation of the claims.13 Furthermore, neither Petitioner nor Petitioner’s declarants provide a reason that the skilled” slip op. at 29

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Figure 3 of Heller, however, does not show an “assembled sensor.” Instead, it provides an exploded view of a sensor, and does not show spacer 28 actually covering sensing layer 32. Thus, Petitioner and its declarants do not even rely on the actual figure in Heller, but instead rely on an imaginary adaptation (an unexploded version) of the figure. Furthermore, Dr. Smith and Mr. McGarraugh offer little more than a conclusory sentence that spacer 28 covers part of sensing layer 32. See Ex. 1008 ¶ 30; Ex. 1009 ¶ 29. Neither declarant offers any evidence to support the conclusion that spacer 28 in Heller actually covers sensing layer 32. Although Dr. Smith discusses possible benefits of having a spacer that covers part of a reagent layer, he directs us to no evidence sufficient to determine that spacer 28 in Heller actually does cover the reagent layer. Ex. 1008 ¶ 30. Such unsupported conclusions are entitled to little weight. 37 C.F.R. § 42.65(a). In sum, Petitioner does not show that Figures 1 and 3 disclose the “spacer layer” of claim 1 with anticipatory specificity.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2018). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Petitioner proposes constructions for four terms, “vertical,” “wettability index,” “air hole,” and “correcting unit.” Pet. 19–20. Patent Owner argues that the Board does not need to construe any claim terms at this time. Prelim. Resp. 5. After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,480,878
• Trans Ova Genetics, LC v. Xy, LLCNo claims unpatentable
  PTAB · Jun 26, 2019 · IPR2018-00250 · APJ David Cotta · IPR · Final written decision

  Claims 1–16 were not proven unpatentable because Petitioner failed to establish that Lu, relied on in every asserted obviousness ground, was prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); In re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). “The question of whether a reference is a work of others for the purposes of § 102(a) is, like that of inventorship, a question of law based on underlying facts.” Allergan, 754 F.3d at 969 (citing Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998)). In determining whether a reference is the work of the named inventor(s), the inquiry focuses on whether the relevant content of the reference – which includes “the design, trial, and analysis of results” – was solely the work of the inventor(s). See Allergan, 754 F.3d at 969; Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1356 (Fed. Cir. 2003) (“What is significant is not merely the differences in the listed inventors, but whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.”).” slip op. at 14

  • Expert testimonyPatent owner expert creditedOther

    “9 We acknowledge that Mr. Miles, as a former board member of XY, as well as XY’s long-time patent counsel and the filer of the ’769 priority provisional applications, may have some interest in the outcome of this IPR and that Mr. Miles is being compensated by XY for time spent relating to his testimony. Ex. 2003 ¶¶ 4–7; Ex. 1033, 21:7–14, 158:8–22. However, we note that Mr. Miles’ testimony was under oath and subject to cross-examination. We find Mr. Miles’ testimony to be credible as to the facts for which it is cited herein.” slip op. at 10

  • ExcludeMotion to exclude, deniedMixed

    “Exclude. Paragraph 12 of the Miles Declaration reads as follows: “Also[,] in the late 1990s, XY had a collaborative research agreement with a bull stud called Cogent in the United Kingdom.” Ex. 2003 ¶ 12.11 This statement is not itself hearsay because it was asserted by Mr. Miles while testifying in this proceeding, i.e., “at the current trial.” See Fed. R. Evid. 801(c). Petitioner contends that paragraph 12 is inadmissible because it is based, at least in part, on statements contained in Exhibits 2001 and 2002. We are not persuaded by this argument because paragraph 12 does not rely on Exhibits 2001 and 2002. See Ex. 2003 ¶ 12; Ex. 1033, 59:22–62:18 (Mr. Miles’ testimony on basis and meaning of paragraph 12 of his declaration). Petitioner also argues that paragraph 12 should be excluded as improper opinion testimony because it is based on Exhibits 2001 and 2002, to which, according to Petitioner, Mr. Miles is not competent to testify. Mot. 13–14. We are not persuaded by Petitioner’s argument because, as discussed, paragraph 12 does not rely on Exhibits 2001 and 2002.” slip op. at 22

  Patent outcomesUS 8,652,769 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,652,769
• Nanya Technology Corporation / Nanya Technology Corporation U.S.A. et al. v. Lone Star Silicon Innovations LLCAll claims unpatentable
  PTAB · May 15, 2019 · IPR2018-00063 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1, 3, 4, 11, 13, and 14 are unpatentable as anticipated by and obvious over Anderson; claims 1, 3, 11, and 13 are also unpatentable over Tanaka and Furukawa.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Petitioner asserts that an ordinarily skilled artisan “would have had at least a Bachelor of Science degree in electrical engineering, physics, chemistry, chemical engineering, material science, or a closely related field and at least 5 years of experience in semiconductor fabrication. Additional appropriate graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 16–17; see Ex. 1003 ¶ 47. Patent Owner agrees generally with Petitioner’s proposed level of ordinary skill in the art. See Resp. 11 (citing Ex. 2006 ¶ 31). We adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill reflected in the specification of the ’061 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect the appropriate level of ordinary skill in the art).” slip op. at 10

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

    “Those disclosures expressly confine the use of separate channel dopants to certain, but not all, individual embodiments of the invention, and persuade us that the patentee did not disavow other ways of creating the claimed “channel region.” Nor does the patentee expressly redefine the disputed claim phrase to exclude a channel region formed as a region of the substrate where current flows between the source and drain regions when a voltage is applied to the gate. Resp. 5 (Patent Owner, acknowledging that “an induced channel with a length defined by the distance between the source and drain is created when the current flows between the source and drain regions”). “The standards for finding lexicography and disavowal are exacting” and it may be “improper to import limitations even from [a] sole embodiment.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). In Thorner, moreover, our reviewing court reversed a decision that narrowed the plain and ordinary meaning of a claim term to comport with the manner in which the term was “consistently use[d]” in “the embodiments in the specification.” Thorner, 669 F.3d at 1365. The principles set forth in the Thorner decision guide our resolution of the correct construction of the disputed claim phrase. See id. There, “the district court improperly limited” the claim terms in view of embodiments described in the specification. Id. at 1369. We decline to do so here. The patentee did not, through “lexicography or disavowal” (id. at 1367–68), narrow the plain and ordinary meaning of the phrase “a channel region formed in the semiconductor substrate.” We recognize that the specification repeatedly describes a channel region characterized by separate channel dopants—and, to be sure, a separately doped channel region may fall within the scope of the challenged claims. But we cannot ignore that the patentee consistently describes a channel region implanted with separate channel dopants as merely “one embodiment” or a “preferred embodiment” of the claimed invention. Ex. 1001, 1:58, 61–64, 3:20–23, 5:40–42, 7:28– 29, 7:40–41. That circumstance, combined with the breadth of the claim language itself, persuades us that the patentee set forth in the specification a preferred embodiment that is “exemplary in nature,” but did not convey, with sufficient clarity or deliberateness, an intent to “define the outer limits of the claim term.” Phillips, 415 F.3d at 1323.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Pet. 17–19; Resp. 27–30. For example, Patent Owner argues that “the word ‘contiguous’ means ‘being in actual contact: touching along a boundary or at a point.’” Resp. 27. We determine, however, that, except for the disputed claim phrase discussed above, no other claim term requires express construction for purposes of this Decision. 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)). To the extent any other claim term requires discussion, however, we provide it in our analysis of the patentability challenges.” slip op. at 18

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

    “Those cited passages persuasively demonstrate that Anderson discloses “a channel region formed in the semiconductor substrate” (Ex. 1001, claims 1 and 11) that is created by defining an area—delineated by source, drain, gate, and gate oxide—designed to accommodate a channel. That area is created at the time of manufacture of the MOS transistor (by Anderson’s annealing step) and Anderson’s channel 5 exists whether the transistor is idle or in use. See, e.g., Ex. 1004, Fig. 1b, Fig. 6. We are persuaded, therefore, that Anderson’s channel 5 meets the disputed claim phrase. See Pet. 24–25, 33–34 (claim charts). Patent Owner does not dispute those facts. Resp. 33–41. Instead, Patent Owner argues, “Anderson must be proven to have a channel region formed in the semiconductor substrate” that is “defined by a region with additional dopants.” Id. at 37–38. For reasons stated above, however, claim 1 does not require a “channel region” defined by separate channel dopants. Anderson defines a region by the spatial arrangement of source, drain, gate, and gate oxide, and that region is designed to accommodate the flow of current when a voltage is applied to the transistor during normal use. Petitioner also persuasively maps the features of the dependent challenged claims (namely, claims 3, 4, 13, and 14) to disclosures in Anderson, and Patent Owner raises no persuasive evidence refuting those points. Compare Pet. 28–36 (claim charts), with Resp. 30–32, 35–41 (offering no countervailing information, except to argue that “Anderson’s channel 5 is not a doped region formed in the semiconductor substrate” and, therefore, “Anderson does not anticipate” any challenged claim). Accordingly, we find Petitioner shows by a preponderance of the evidence that Anderson anticipates claims 1, 3, 4, 11, 13, and 14 of the ’061 patent.” slip op. at 24

  Patent outcomesUS 6,097,061 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,097,061
• Renesas Electronics Corporation / Renesas Electronics America, Inc. v. Lone Star Silicon Innovations, LLCAll claims unpatentable
  PTAB · Apr 8, 2019 · IPR2017-01872 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–5, 8–12, and 15 are unpatentable as obvious over the Admitted Prior Art and Dummy Gate References.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “are persuaded that Petitioner has identified with sufficient particularity where and how the limitations of the claims are taught by the prior art, and that the Petition complies with § 312(a)(3). See Pet. 21–43. Petitioner’s case is premised for the most part on the disclosures of the APA. Petitioner, however, relies on Yonemaru and Haribuchi to teach uniformly positioned gates. Petitioner’s claim chart identifies the portions of the APA that Petitioner asserts meet the limitations of the challenged claims, and the portions of Yonemaru and/or Haribuchi that meet the remaining limitations of the challenged claims. See id. at 23–43. We are also persuaded that Petitioner has articulated with sufficient particularity its contention as to why one of ordinary skill in the art would have been prompted to combine the references in the manner proposed by Petitioner. Pet. 21–22 (citing Ex. 1004 ¶¶ 73–75). We, thus, are not persuaded by Patent Owner’s argument that the Petition fails to identify adequately the evidence that supports the challenge, or otherwise fails to comply with § 312(a)(3). Petitioner has made its case by a preponderance of the evidence, by clearly identifying the portions of the respective references on which it relies, and also by articulating “specific reasoning, based on evidence of record, to support the legal conclusion” that one of ordinary skill in the art, given the teachings of the APA, would have appreciated that more uniform distribution of gates explicitly shown by Yonemaru and Haribuchi is advantageous. See Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 21

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

    “Yonemaru and Haribuchi have oxide beneath the spacers (id. at 32). Petitioner, however, argues that all three references “recognize a desire to fabricate transistors with uniform characteristics” (Pet. 21 (citing Ex. 1001, 1:37–39; Ex. 1006, 122 (Problem to be Solved); Ex. 1008, Abstract)), and Yonemaru and Haribuchi teach generally that “[u]niformity among spacers leads to uniform transistor characteristics.” Id. (citing Ex. 1006, 123 (Benefits of Invention); Ex. 1008 ¶ 23). We find that Petitioner’s reliance on Yonemaru and Haribuchi is directed to their teachings of spacing arrangements, which Petitioner has shown are applicable to the APA’s gate formation process. More particularly, Petitioner has demonstrated by a preponderance of the evidence that the “uniformity among spacers” teachings of Yonemaru and Haribuchi are directly applicable to the gate formation process of the APA, and that one of ordinary skill in the art would have been motivated to apply these teachings in the manner proposed by Petitioner. Pet. 21–22; Ex. 1004 ¶¶ 73–75 (describing fabrication of dummy gates in the proposed combination); Reply 3–4 (citing Ex. 1006, 122; Ex. 1008 ¶ 22). We also find that Petitioner has demonstrated that the gate oxide beneath the spacers is not critical for Yonemaru’s and Haribuchi’s teachings as they pertain to the proposed combination, because one of ordinary skill would have understood that spacers do not necessarily need to be isolated from a substrate by a gate oxide layer, as shown in the APA. Pet. 9 (citing Ex. 1004 ¶¶ 36–38); 21–22; annotated Figs. 2a, 2b; Reply 6. Petitioner also has demonstrated that neither Yonemaru nor Haribuchi place any specific emphasis on having a gate oxide layer between the spacers and the substrate vis-à-vis solving the problem of uniformly-sized spacers. Tr. 6:11–24; Reply 6–7 (citing Ex. 1006, 121; Ex. 1008 ¶¶ 19, 22). We further find that Petitioner demonstrates that one of ordinary skill in the art would have been motivated to improve the APA design with the techniques taught by Haribuchi and Yonemaru, namely, providing dummy gates as a solution to non-uniform sidewall sizing in operational transistors, and that this combination proposed by Petitioner would result in the claimed invention. Pet. 21–22; Reply 3; Ex. 1004 ¶¶ 73–75. Thus, we find that Petitioner has proven by a preponderance of the evidence that Yonemaru and Haribuchi teach the limitations not provided by the APA, and that one of ordinary skill in the art would have been prompted to combine them with reasonable expectation of success. Pet. 21.” slip op. at 25

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

    “Additionally, we find that Haribuchi does not teach away from forming non-operable gate arrangements having spacers directly contacting the substrate. Specifically, we find that while Haribuchi does convey a particular method of forming operable and non-operable gates, it does not expressly criticize, discredit, or otherwise discourage forming non-operational gates having spacers directly contacting the substrate, as required for a “teaching away.” “A reference does not teach away ‘if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed.’” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)).” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We note that, during this proceeding, the parties did not direct our attention to any objective evidence of non-obviousness.” slip op. at 15

  Patent outcomesUS 6,103,611 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,103,611
• HTC Corporation / HTC America, Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01556 · APJ Thu A Dang · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 4 was obvious over Padovani and Gils.

  RulingsInstitution decision

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

    “B. Principles of Law 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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied on). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “Although Petitioner contends “a POSITA would have been motivated to provide greater protection for the decimal integer portion (an error in which would be magnified versus an error in the decimal fraction portion)” in Padovani (Pet. 33), Petitioner does not identify any passage or combination of passages in Padovani that teaches or suggests providing, or even the need to provide, greater protection for one decimal portion than the other decimal portion, let alone by using “different coding schemes for the different parts.” Id. As Patent Owner asserts, “Padovani discloses using a single code to encode the DRC message[,]” and “does not teach using multiple codes to encode different portions of the DRC message.” Prelim. Resp. 14 (citing Ex. 1009, 45:20–22 (emphasis added)). We recognize that Petitioner’s Declarant, Dr. Min, testifies that, “by virtue of Padovani contemplating the use of an (n,k) coding scheme,” the POSITA “would have naturally sought out similar coding schemes [as those of Gils] to protect DRC messages.” See Pet. 41 (citing Ex. 1017 ¶ 156). Dr. Min further testifies that “a POSITA would have been motivated to provide greater protection for certain bits by selecting appropriate code words generated by one or more of the coding schemes contemplated by Gils,” and thus, use “different coding schemes for the different parts.” Ex. 1017 ¶ 132. Dr. Min’s testimony, however, does not address adequately why one of ordinary skill in the art would have used together different coding schemes from Gils, let alone a separate scheme for certain bits over the other bits. As Dr. Min testifies, “a single UEP coding scheme could also be used depending upon how a POSITA would have wanted to implement unequal error protection.” Ex. 1017 ¶ 132; see Pet. 33 (citing Ex. 1017 ¶ 132). As such, Dr. Min acknowledges that a single unequal error protection coding scheme could be used as well as applying different coding schemes to different parts of a message. Here, Dr. Min’s testimony that a single unequal error protection coding scheme could be used further undermines Petitioner’s position that one of ordinary skill in the art would have used the different coding schemes for different parts as set forth in Gils. Thus, Dr. Min’s testimony does not adequately explain why one of ordinary skill in the art would have applied different coding schemes from Gils to the DRC message of Padovani, much less in the manner proposed by Petitioner, of providing greater protection for the decimal integer portion than the decimal fraction portion, especially when Padovani discloses “using a single code to encode the DRC message.” See Prelim. Resp. 14 (citing Ex. 1009, 45:20–22).” slip op. at 14

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

    “Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Min’s declaration testimony to support its contention that one of ordinary skill in the art would have used Gils’s techniques to encode Padovani’s DRC message in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Petitioner also has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize- Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (citation omitted)).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Moreover, Dr. Min’s contention that “[t]he nature of binary numbers (or other base-x number systems) means that the leftmost bit of any binary number is the most significant bit” (Ex. 1017 ¶ 154) is conclusory. As Patent Owner points out, “Dr Min’s declaration, however, merely repeats the allegations of the Petition without any explanation or citation to any supporting or corroborating evidence.” Prelim. Resp. 20 (citing Ex. 1017 ¶ 154). That is, “[t]here is no proffered evidence that it was well understood by a POSITA at the time that the leftmost bit in binary numbers, and specifically in the DRC message of Padovani, is the ‘most significant bit.’” Prelim. Resp. 20. For that reason, we give little weight to Dr. Min’s uncorroborated testimony that “the leftmost bit of any binary number is the most significant bit.” 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]”).” slip op. at 15

  § 103 obviousnesscites KSR
  Patents in suitUS 7,206,587
• Apple Inc. / Zte(Usa) Inc. v. Invt Spe LLCInstitution denied
  PTAB · Mar 5, 2019 · IPR2018-01474 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claim 4 because Petitioner did not show a reasonable likelihood that Bender and Piret rendered it obvious; claim 3 had been statutorily disclaimed.

  RulingsInstitution decision

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

    “For the foregoing reasons, Petitioner does not demonstrate a reasonable likelihood of prevailing in showing that claim 4 would have been obvious over Bender and Piret. See 35 U.S.C. § 316(e) (To prevail in an inter partes review that has been instituted, “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). III. CONCLUSION We conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’587 patent challenged in the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims of the ’587 patent, and no trial is instituted.” slip op. at 17

  • Adverse judgmentAdverse judgmentOther

    “We agree with Patent Owner. “A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.” Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (citing Altoona Publix Theatres, Inc. v. Am. Tri–Ergon Corp., 294 U.S. 477 (1935)). An inter partes review cannot be instituted on claims that have been disclaimed and no longer exist. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”). This conclusion is consistent with other panel decisions addressing this issue. See, e.g., Intuitive Surgical, Inc. v. Ethicon LLC, Case IPR2018-00935, Paper 9, 9–10 (PTAB Dec. 7, 2018); Vestas-Am. Wind Tech. Inc. v. Gen. Elec. Co., Case IPR2018-01015, Paper 9, 12–14 (PTAB Nov. 14, 2018). Accordingly, we treat claim 3 as having never been part of the ’587 patent, and do not institute inter partes review on this claim. As discussed above, we regard claim 4 as the only challenged claim. See Sections I.A and I.E.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “Accordingly, a plain reading of the reference does not support a finding that Bender teaches or suggests that the FEC scheme is used to encode the SNR itself. Therefore, we are not persuaded that Bender’s FEC description would have provided reason to look to Piret’s encoding techniques for encoding Bender’s “quality” information. That is, although we agree with the Petitioner that Piret teaches and suggests a method of encoding less significant bits differently from the more significant bits of each data word, wherein the most significant bit of the plurality of bits is encoded to be less susceptible to errors (Ex. 1005, 1:20–33), that alone is insufficient to support a conclusion of obviousness of providing an encoder that encodes Bender’s SNR “quality” information, as required by claim 4. That Piret discloses encoding transmitted information does not address the requirements set forth in KSR to provide articulated reasoning with rational underpinning to support the legal conclusion of obviousness. That is, the Petitioner’s obviousness position does not explain why a person of ordinary skill in the art would have encoded the SNR value in Bender, which may not even be transmitted, using Piret’s encoding method. Indeed, Petitioner does not direct us to persuasive evidence that encoding the SNR value would have been expected to provide any advantage, outside the teachings of the ’587 patent. Here, for these reasons discussed above, we conclude that Petitioner has not provided sufficient evidence from prior art references or Dr. Singer’s declaration testimony to support its contention that one of ordinary skill in the art would have used Piret’s techniques to encode Bender’s SNR values in the manner required by the claims—such that the most significant bit of the plurality of bits is encoded to be less susceptible to errors. Therefore, Petitioner has not demonstrated articulated reasoning with rational underpinning to support the legal conclusion of obviousness. See PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Instead, we conclude that Petitioner used improper hindsight to reconstruct the claimed subject matter by using the claims as a guide to combine the prior art references. Grain Processing Corp. v. Am. Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. In that regard, Petitioner’s Declarant, Dr. Singer, testifies that a person of ordinary skill in the art at the time of the ʼ587 Patent’s invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with wireless communication systems or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 6; Ex. 1003 ¶ 39. At this juncture, Patent Owner does not dispute Dr. Singer’s assessment on the level of ordinary skill in the art. See generally Prelim. Resp. Based on the current record, we apply Dr. Singer’s assessment for purposes of this Decision. We also note that the prior art of record currently in the instant proceeding is consistent with this level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself reflects an appropriate level” of ordinary skill in the art).” slip op. at 8

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,206,587
• Nikon Corporation v. Carl Zeiss AG And ASML Netherlands B.V.Rehearing denied
  PTAB · Feb 1, 2019 · IPR2018-00686 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Nikon’s rehearing request, leaving institution denied for claims 1–5, 7–10, 16, 24, and 30–33 based on § 325(d) and the priority-date analysis.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “37 C.F.R. § 42.71(d) provides that: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically 1 The Petition, in an apparent typographic error, omits claim 5 from its listing of challenged claims on page 1. identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). 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.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In the Institution Decision, we denied institution of Ground 1 based on our discretion under 35 U.S.C. § 325(d). Inst. Dec. 17. Specifically, we determined that the Kaifu reference relied on by Petitioner was considered during prosecution. Id. Petitioner asserts that we misapprehended or overlooked its arguments regarding why its contentions as to Kaifu were not considered by the Examiner.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “written description. To satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1, the specification must “clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal brackets omitted) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Thus, the specification must reasonably convey to those skilled in the art that the inventor possessed, at the time of filing, the subject matter that he or she has claimed. Id. “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. Whether a specification complies with the written description requirement is a question of fact. Id. at 1351, 1355. Entitlement to a filing date extends only to subject matter that is disclosed, not to that which is obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We determine that because the open ended term “comprising” was used in the original claim reciting “a” signal, the recitation of “a” signal and “one or more” signals would have the same scope. An indefinite article, such as “a,” in patent parlance encompasses “one or more” when used, as here, in open-ended claims containing the transitional phrase “comprising.” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “Unless the claim is specific as to the number of elements, the article ‘a’ receives a singular interpretation only in rare circumstances when the patentee evinces a clear intent to so limit the article.” Id. Thus, the claim as amended, which removes the open ended preface “comprising” and changes the modifier of “select signals” from “a” to “one or more,” does not change the scope of the claim in that respect. It merely is a different phrasing. Thus, as we stated in the Institution Decision, any description of a system with one signal would necessarily support a claim to one or more signals. Inst. Dec. 28. Additionally, the claim, as amended, does not suggest there is choice between alternatives that would meet this claim. For example, the claim does not require a choice between a first type of signal and a second type of signal. The claim recites “one” signal, which can be optionally accompanied (“or”) by “more” signals.” slip op. at 8

  Claim construction§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,728,574

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.