- Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01416 · APJ Bryan F Moore · IPR · Final written decision
Claims 1, 2, and 4–10 are unpatentable as obvious over Fujii, Fujii and Nakamura, or Fujii and Tsutsui, as applicable.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In essence, Patent Owner’s construction of the term “light shield area” as requiring an observable effect on the quantity of light leakage in order to improve the quality of the display to the user imports a term of degree into claims that recite this feature. “When a ‘word of degree’ is used [in a claim], . . . the patent [must provide] ‘some standard for measuring that degree.’” Enzo Biochem v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (citing Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)). “The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014). “When a claim term ‘depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,’ without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)). The phrases “observable” and “quality to the user” are highly subjective and, on their face, provide little guidance to one of skill in the art. These phrases are not recited explicitly in the claims themselves. Patent Owner has not directed us to any disclosure in the written description, nor can we find such a disclosure, relevant to determining a standard for 11 measuring the necessary degree of observability or quality.3 Consequently, we decline to adopt Patent Owner’s construction of the term “light shield area” because it would inject unnecessary ambiguity into the claims that recite this feature. Instead, we maintain our initial determination that “light shield area” should be accorded its plain and ordinary meaning (i.e. area that shields light), which, in our view, is a broad, yet reasonable construction in light of the Specification and claims of the ’275 patent.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Patent Owner relies on Allergan for the proposition that Fujii’s criticism of blocking light means that it cannot be relied on as prior art in this case. PO Resp. 26 (citing Allergan, Inc. v. Sandoz Inc. 796 F.3d 1293, 1305-06 (Fed. Cir. 2015)). Patent Owner asserts that, “[i]n Allergan, the court found that the prior art criticized the claimed formulation [BAK] because the reference taught one of ordinary skill in the art to minimize the amount of a particular claimed element in order to avoid certain problems. PO Resp. 26 (citing Allergan, 796 F.3d at 1305–06.). However, Patent Owner does not explain that, in Allergan, “the prior art taught that BAK should be minimized in ophthalmic formulations to avoid safety problems.” Allergan, 796 F.3d at 1305. In Allergan, “the prior art [also] taught that BAK would not increase the permeability of bimatoprost, but might instead decrease it.” Id. at 1306. Thus, in Allergan, the prior art taught that the formulation at issue caused safety problems and caused the opposite effect than the one desired by the patent at issue. Here, in contrast, Fujii teaches that the metal auxiliary terminals will cause the exact effect desired (or intended result) in the ’275 patent, even though that same effect, i.e. blocking light, is disfavored by the Fujii inventors. In fact, Fujii suggests that the light blockage above the maximum width would block light and “darken[] the screen.” Ex. 1003, 16:11–32. This disclosure is Fujii is supported by the testimony of Dr. Chiang. Ex. 1008 ¶ 52 (testifying that chromium wiring materials disclosed in Fujii may be used as opaque light shield areas used to darken a screen). 15 Also relevant to Patent Owner’s argument presented here is its’ assertion in its claims construction argument that light shield areas must have an observable effect or “there would be no point in providing the light shield areas.” PO Resp. 20. Were we to accept that logic, then we would also apply the same logic here that there would be no point in reducing darkening in Fujii unless the darkening described was an observable effect. “A finding that two inventions were designed to resolve different problems . . . is insufficient to demonstrate that one invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). While Fujii suggests limiting the width of the metal auxiliary electrodes to avoid darkening of the screen and maintaining a consistent gap between the top and bottom substrates, it also teaches one of ordinary skill that widening of the metal auxiliary electrodes shields light to the screen. See, e.g., Ex. 1003, 16:29–33 (disclosing that “[w]hen the width of the metal auxiliary electrode 56 is increased to further reduce the wiring resistance, the display opening factor of the liquid crystal device is reduced darkening the screen”). Finally, in our claim construction section above, we construed “light” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find that Fujii explicitly states that “the invention [of Fujii] can also be applied to an active matrix liquid crystal display,” and further states that the electrodes could be replaced by “scanning signal . . . or video signal lines.” Ex. 1003, 1:7–12, 12:54–67. As mentioned previously, Fujii states that the auxiliary electrodes may cause a darkening of the panel. Id. at 16:29–33. This is the same effect that the inventors of the ’275 patent were trying to achieve. Ex. 1001, 2:39–43. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. A person of ordinary skill is a person of ordinary creativity, not an automaton. Id. at 421. Thus, because Fujii explicitly contemplates that its teachings may be applied to an active matrix liquid crystal display, and Fujii shares a common objective with the inventors of the ’275 patent— namely, resolving uneven brightness or darkening of a panel—Fujii provides sufficient teachings such that one of ordinary skill in would implement the claimed light shield areas in an active matrix crystal display. Pet. 19; Pet. Reply 9. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 2 and 4, which depend from claim 1. We have reviewed Petitioner’s proposed ground of obviousness by Fujii against claims 1, 2, and 4, and we agree with and adopt Petitioner’s 20 analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 4 would have been obvious over Fujii.” slip op. at 20
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude the ’163 patent introduced by Petitioner with its Reply as improper reply evidence and as irrelevant. Mot. to Exclude 1. Petitioner relies on the ’163 patent to support Dr. Watts’s purported admission that “in the embodiment of the ’275 patent where light shield areas are comprised of strips of light shield material (as shown in blue 27 coloration in Figure 6), the strips are on the order of 10–20 microns wide.” Pet. Reply 11 n.2. This issue is moot because this Final Written Decision does not cite to or rely upon the ’163 patent. In addition, we do not rely on any assertion by Petitioner that light shield material in the ’275 patent is on the order of 10–20 microns wide. For that reason, we do not address the matter on the merits and dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 27
Patent outcomesUS 5,850,275 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,850,275 - Samsung Display Co., Ltd. / Funai Electric Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentablePTAB · Dec 27, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Final written decision
Claims 2, 3, 5, and 6 are unpatentable: claims 3, 5, and 6 as anticipated by Takizawa; claim 2 as obvious over Takizawa and Hoshino; and claims 2, 3, and 6 as anticipated by Hoshino.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDisclaimer not foundDecided for petitioner
“The Federal Circuit “counsels the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.” Id. Additionally, “‘words or expressions of manifest exclusion’ or ‘explicit’ disclaimers in the specification are necessary to disavow claim scope.” Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Whether the order of the steps recited in a method claim must be performed in a particular order is properly a part of claim construction. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371–72 (Fed. Cir. 2003). Generally, steps may be performed in any order so long as “nothing in the intrinsic evidence” compels otherwise. Id. at 1370. “Interactive Gift recites a two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written.” Altiris, 318 F.3d 1369 (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). “First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written.” Id. “If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1370. (citation omitted). If not, the sequence in which such steps are written is not a requirement.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Takizawa does require forming an etch-stop (or channel protection layer, referred to as “the protecting film 18” in Takizawa) prior to (and as a necessary prerequisite to) forming the operative semiconductor of the TFT. Ex. 1003 at 15:1–32. However, Takizawa still performs only five patterning steps. In fact, Patent Owner admits that Takizawa performs only five etching/patterning steps. Tr. 40:23–41:9 (“there are five steps in Takizawa”); Ex. 2025 ¶ 49. Patent Owner suggests that to meet the claims limitations, step (c) must be performed before, in a separate and distinct manner from step (d). PO Resp. 47–48. Petitioner states that, although Takizawa may not perform step (c) of claim 1 before step (d), this claim do not require a specific order of steps. Pet. Reply 16. Patent Owner’s argument is premised on construing claim 1 to require performing step (c) of the claim before step (d). As we explained above in the claim construction section, we did not so limit this claim; thus, we are not persuaded by Patent Owner’s argument. See supra Section II.A.2. Patent Owner does not address separately Petitioner’s contentions and supporting evidence with respect to claims 3, 5, and 6. See generally PO Resp. 47–48. We have reviewed Petitioner’s proposed ground of anticipation by Takizawa against claims 3, 5, and 6, and we agree with and adopt Petitioner’s analysis. Based on the record developed during trial, Petitioner has shown by a preponderance of the evidence that Takizawa anticipates claims 3, 5, and 6.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner concludes that one of ordinary skill in the art would have recognized that the TFT array operates best when the ACBL receives a consistent voltage, which is provided by driving circuitry through the ACBL terminal. Thus, to create a properly operating device, [a person of ordinary skill in the art] would seek out methods of providing a reference voltage to the capacitive electrodes and would incorporate the ACBL terminal of Hoshino into the Takizawa device in order to do so. Pet. 29; Ex. 1012 ¶ 70. We agree and adopt this stated rationale because it provides specific motivation to make the combination. We credit Petitioner’s declarant who testifies that “the [a person of ordinary skill in the art] would know how to etch the ACBL contact hole and gate bus line 24 contact hole in the same photolithography step because Hoshino provides an example of doing so.” Ex. 1012 ¶ 70. Hoshino itself provides the “how” to achieve the claims limitation.” slip op. at 24
Patent outcomesUS 5,966,589 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,966,589 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 23, 2016 · IPR2016-01091 · APJ James B Arpin · IPR · Institution
The Board denied institution on claims 1–21, exercising its discretion because this third petition used earlier responses and decisions to refine challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Patent Owner contends that Petitioner used our decisions in the earlier cases as a roadmap for attempts to remedy deficiencies in its earlier petitions. Prelim. Resp. 4–5, 15–16. Patent Owner points to Petitioner’s discussion of its earlier unsuccessful challenges to claims 1–21 of the ’513 patent as evidence of Petitioner’s improper use of our decisions in an effort to perfect its present challenges. Id. We agree. Further, Petitioner acknowledges that the instant Petition attempts to refine the construction of the term “message profile containing outgoing message routing instructions” in view of our construction of that term in our decision to institute review in challenges, based on Shetty, to claims in Case IPR2016-00116. Pet. 17 n.5. Petitioner also provides no explanation as to why claims 1–21 of the ’513 patent could not have been challenged over Shetty and Joao, alone or in combination with Britton and or Garton, in the ’129 petition or in a contemporaneously filed petition. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Petitioner also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 2, 2015, and the filing date of the instant Petition, i.e., May 24, 2016. Because the instant Petition was filed only about one week prior to the raising of the Section 315(b) bar against further challenges to claims 1–21 of the ’513 patent, we can discern no other motivation apart from the information to be gleaned from Patent Owner’s preliminary responses and our decisions on institution in the related cases. See Prelim. Resp. 16–17.” slip op. at 10
Discretionary denialPatents in suitUS 6,717,513 - Alarm.Com Inc. v. Vivint, Inc.Institution deniedPTAB · Nov 17, 2016 · IPR2016-01080 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution for claims 3, 16, 24, 32, 42, and 43 because serial petitions, prior decisions, and inconsistent-decision risks favored exercising discretion.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“received both Vivint’s preliminary responses and our decisions in Cases IPR2015-02004, IPR2016-00116, and IPR2016-00155, explaining why its earlier challenges to claims 3, 16, 24, 32, 42, and 43 were deficient, before filing the instant Petition. In addition, Alarm.com had received Vivint’s preliminary responses and our decisions in other cases in which the applied Shetty and Britton references were asserted. Thus, the instant Petition is essentially a composite response to our decisions in those earlier proceedings. Alarm.com also offers no other explanation for the length of time that elapsed between the time it learned of the referenced art here asserted, i.e., at least November 5, 2015, and the filing date of the instant Petition, i.e., May 20, 2016. Because the instant Petition was filed only about two weeks prior to the raising of the Section 315(b) bar against further challenges to claims 3, 16, 24, 32, 42, and 43 of the ’601 patent, we can discern no other motivation apart from the information to be gleaned from Vivint’s preliminary responses and our decisions on institution in the related cases.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“B. Conclusion For the reasons discussed above, and given the limited resources of the Board, we exercise our discretion not to institute review in this proceeding. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. IV. ORDER Accordingly, it is ORDERED that the Petition is denied and no trial or inter partes review is instituted for claims 3, 16, 24, 32, 42, or 43 of the ’601 patent on any asserted ground.” slip op. at 14
Discretionary denialPatents in suitUS 6,147,601 - Amit Agarwal v. Immersion CorporationInstitution deniedPTAB · Sep 19, 2016 · IPR2016-00807 · APJ Minn Chung · IPR · Institution
Institution was denied for all challenged claims because the petition did not show a reasonable likelihood of prevailing on either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated only if a single prior art reference expressly or inherently describes each and every limitation set forth in the claim. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). Further, a reference cannot anticipate “unless [it] discloses within the four corners of the document not only all of the limitations claimed[,] but also all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). We analyze this asserted ground based on anticipation with the principles identified above in mind. 2. Overview of Rosenberg (Ex. 1002)” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“35 U.S.C. § 103(a) over the combination of Rosenberg and Simon. Pet. 17– 20. Claims 5 and 15 depend from claims 1 and 12, respectively, and further recite “wherein the display signal is configured to display a keypad comprising a plurality of softkeys.” Claims 7 and 17 depend from claims 1 and 12, respectively, and further recite “wherein the plurality of softkeys comprises one softkey for each digit from 0 to 9.” Similar to its challenges based on anticipation discussed above, Petitioner relies on Rosenberg as disclosing all of the limitations of underlying independent claims 1 and 12. Id. at 17. Simon is relied upon by Petitioner only to teach the additionally recited limitations of claims 5, 7, 15, and 17. Id. at 17–19. Hence, Simon cannot and does not remedy the above-identified deficiencies in Petitioner’s analysis of challenged independent claims 1 and 12. Accordingly, on this record, the information presented in the Petition does not demonstrate a reasonable likelihood of Petitioner prevailing in its challenge to claims 5, 7, 15, and 17 under 35 U.S.C. § 103(a) as obvious over the combination of Rosenberg and Simon.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim interpretation is needed” (Pet. 1), and Patent Owner does not propose any claim constructions in this case (Prelim. Resp. 10). Having considered the arguments and evidence presented, we determine that no claim terms require express interpretation for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,773,356 - Silergy Corporation v. Monolithic Power Systems, Inc.All claims unpatentablePTAB · Sep 14, 2016 · IPR2015-00804 · APJ Christopher L Crumbley · IPR · Final written decision
Claims 1–8 and 10 are unpatentable: claims 1–5 and 10 are anticipated by Sirinorakul; claims 6–7 are obvious over Sirinorakul or Sirinorakul and Eslamy; claim 8 is obvious over Sirinorakul and Khor.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party’s proposed construction adds clarity to the term beyond that provided by the express language of claim 1. Silergy’s construction introduces into the term two requirements—“contacts the solder ball” and “more wettable to a solder ball”—that appear elsewhere in claim 1, making their inclusion in the construction redundant. As for Monolithic’s construction, we see no reason to limit the attachment area to materials deposited during the photoresist process. As discussed above, the inventor’s use of the word “includes” as a transitional phrase signifies that additional steps may be part of “forming the attachment area and non-attachment area,” even after the photoresist process. For these reasons, we reconfirm our determination in the Decision on Institution that the language of claim 1 is sufficiently clear, and that the term attachment area requires no express construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Although not every process claim is limited to the performance of its steps in the order written, the language of the claim, the specification and the prosecution history” may in some instances compel a particular order. Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). First, the claim language must be examined “to determine if, as a matter of logic or grammar, they must be performed in the order written.” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). If not, we look to the specification and prosecution history to determine whether an order is directly or implicitly required. Id. slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Taking the latter argument first, Monolithic’s contentions lack merit in view of our conclusion regarding the order of the steps of claim 1. Monolithic’s argument is premised on its contention that in claim 1, the contacting must occur before reflowing begins. As discussed above, the language of claim 1 permits the contacting step to take place before, or during, the reflowing step. Figure 9B of Sirinorakul depicts contact between plated layer 64 and solder ball 42 “during the reflow process.” Ex. 1004, 4:42. Monolithic does not dispute that plated layer 64 is an attachment area; nor does it dispute that there is contact with solder ball 42 during reflow. Tr. 76:7–17 (“[I]n each of those figure Bs in the embodiments disclosed in the [Sirinorakul] prior art reference, it shows during the reflow process. . . . Here it’s showing the contact occurs during reflow.”) (emphasis added). Even if lead-free solder layer 72 is not part of the attachment area—an argument we address below—Figure 9B of Sirinorakul does not show solder layer 72 during reflow, or that there is any other object blocking contact between plated layer 64 and solder ball 42. We, therefore, find the disputed contacting step to be satisfied because plated layer 64 (the attachment area) contacts solder ball 42 during reflow.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed Silergy’s undisputed evidence as to claims 6 and 7, and we determine that a preponderance of the evidence supports Silergy’s position. Although Sirinorakul does not disclose the modified photoresist process required by claims 6 and 7, we credit Dr. Baker’s unchallenged testimony that it would have been within the level of ordinary skill in the art to modify a photoresist process to mask the non-attachment area instead, and that the skilled artisan would have recognized this as a predictable variation. Ex. 1003 ¶ 36. Mr. McAlexander does not provide testimony to the contrary. Ex. 2001 ¶ 52. Although it does not address the merits of the obviousness ground, Monolithic instead generally contends that Silergy failed to prove obviousness, as it did not address all factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). PO Resp. 41–43. We disagree. As set forth above, Silergy and Dr. Baker set forth the scope and content of Sirinorakul; the differences between Sirinorakul and claims 6 and 7 (namely, the reversal of the photoresist masking); and the level of ordinary skill in the art (see Ex. 1003 ¶¶ 26–27). Neither party introduced evidence of objective indicia of nonobviousness. Consequently, Monolithic’s argument on this point lacks merit.” slip op. at 22
Patent outcomesUS 8,361,899 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,361,899 - Plaid Technologies, Inc. v. Yodlee, Inc. And Yodlee.Com, Inc.Rehearing grantedPTAB · Aug 12, 2016 · IPR2016-00275 · APJ John A Hudalla · IPR · Rehearing
The Board denied Plaid’s rehearing request and maintained denial of institution because Plaid failed to show good cause to excuse late service and an incomplete, time-barred petition.
RulingsRehearing decision- PTAB / AIA Trials › §315(b) time barDenied
“treatment of the service issue. Our regulations state that a filing date will not be accorded to a Petition until, among other things, service is effected. See 37 C.F.R. §§ 42.105(a), 42.106(a). The undisputed evidence put forth by Plaid indicates that it did not attempt to serve Yodlee with the Petition and supporting evidence until December 3, 2015. See Req. Reh’g 2; Ex. 1022 ¶ 9. In our Decision, we applied the regulations to the particular facts of this case and “determine[d] that December 3, 201[5], is the earliest date by which Plaid satisfied the service requirement for according the Petition a filing date.” Dec. 7 (citing 37 C.F.R. §§ 42.105(a), 42.106(a)). Therefore, we maintained the initial filing date accorded to the Petition, which was one day after the statutory deadline under § 315(b), and we termed Plaid’s service activities to be “late service.”1 Dec. 6–7. Indeed, Plaid would have had no reason to file a motion to change the filing date had its actions not been “late.” Moreover, our Decision expressly stated that we did not need to “address whether, under appropriate circumstances, we have authority to grant an earlier filing date.” Dec. 8. Rather, our Decision focused on whether Plaid had shown good cause to waive the service requirements imposed by 37 C.F.R. §§ 42.105(a) and 42.106(a). Id. at 8–10. Irrespective of the interplay among the relevant regulations and statutory deadline under § 315(b), we found that Plaid had not shown good cause and that it was not in the interests of justice to excuse Plaid’s late service under 37 C.F.R. § 42.5(b) and (c)(3). See id. Among other reasons, we were not persuaded that waiting for potential changes from a declarant constituted good cause for Plaid to delay its filing and eventual service of the Petition and supporting evidence. See Dec. 8–9. We also weighed the potential” slip op. at 3
- RehearingRehearing, grantedRehearing, deniedGranted in part
“for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 2
Discretionary denialPatents in suitUS 6,199,077 - Alarm.Com Inc. v. Vivint, Inc.Rehearing deniedPTAB · Jul 28, 2016 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 11–13, 15, 16, 19–21, 23, and 24 because the asserted art did not teach the claimed device identification codes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s 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., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The burden of showing a decision should be modified lies with the party challenging the decision, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, it is not an abuse of discretion to have performed an analysis or reached a conclusion, with which Petitioner disagrees; mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable, Petitioner cited Shetty’s disclosure that “the user may be notified by an electronic mail message or report 114 or by a[] pager report via a pager 116 or by a facsimile report 122” (Ex. 1103, 2:46–48), and Levac’s disclosures that “the message template with the variable value may be submitted to message server 14 through user interface 20 and message file generator 23 as a .msa file,” which “can then be stored in variable database 29 to await receipt of variable data”; and that “[p]referably, the .msa file created by message file generator 23 may incorporate . . . the following information: 1. OWNER: identifies the user who created the file . . . . 10. DESTPARAMS: supplies a list of destination parameters, such as recipient site location, required for transmitting the message to the destination” (Ex. 1105, 4:48–52, 5:49–53, 11:8–13). Pet. 38–39. In our Decision on Institution, we agreed with Patent Owner’s argument in its Preliminary Response that the evidence cited by Petitioner does not teach or suggest storing “communication device identification codes of all of said user-defined communication remote devices,” explaining that we could find in Petitioner’s cited evidence no suggestion that either Shetty’s “user profile database” or Levac’s “variable database” store anything that could be termed “communication device identification codes” under any reasonable interpretation of that term. Dec. on Inst. 40. In particular, we found that Shetty describes storing user profiles containing definitions of “how to send a notification to [an] associated user,” but that those definitions would, at most, identify addresses such as for e-mail messages or reports or telephone numbers such as for pager reports or facsimile reports,5 not the recited “communication device identification codes.” Id. at 40–41. We also explained that we agreed with Patent Owner that neither identification of the user who created a file, as in the “OWNER” field of Levac’s variable database, nor supplying parameters such as recipient site location, as in Levac’s “DESTPARAMS” field, teaches or suggests “communication device identification codes.” Id. at 41.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that a user may be notified by “an electronic mail message or report 114 or by a[] pager report via a pager 116 of by a facsimile report 122,” and Levac discloses storage of identification of the user who created a file and “recipient site location,” we disagree with Petitioner’s premise that Shetty’s and Levac’s disclosures are “identical to the preferred embodiment of the ’654 Patent” for the “communication device identification codes” limitation of claims 11 and 19.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,462,654 - I-Blason LLC v. Aevoe Corp.Rehearing deniedPTAB · Jul 25, 2016 · IPR2016-00231 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 2, 5, 7, and 11–14 because Petitioner did not show the interference-pattern limitation or iVisor’s public availability.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that I-Blason did not establish a reasonable likelihood of prevailing on its challenges as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. III. CONCLUSION For the foregoing reasons, I-Blason has not shown that we abused our discretion when determining not to institute an inter partes review as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. IV. ORDER For the foregoing reasons, I-Blason’s Request for Rehearing is denied.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“publication (Ex. 1005) is a printed publication within the meaning of 35 U.S.C. § 102. Req. Reh’g 7–8. I-Blason cites a Board decision that found that a web page with a note of “last modified on February 2, 1999” was a printed publication as of that date. Id. at 7 (citing American Megatrends, Inc. v. Kinglite Holdings, Inc., Case IPR2015-01079, slip op. 11 (PTAB October 29, 2015) (Paper 17)). As we explained in the Decision (see Dec. 14), the evaluation as to whether a document is a printed publication is considered on a case-by-case basis. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Here, the iVisor document appears to be a type of web page that could be subject to frequent changes and updates. Moreover, other than unsubstantiated testimony from I-Blason’s counsel of record concerning a 2015 version of the document (Ex. 1019 ¶ 3), I-Blason provides no evidence to demonstrate that the version of iVisor filed in this proceeding was made publicly available in 2009. Upon reconsideration, we maintain our initial determination that I-Blason has failed to make a threshold showing that iVisor is a printed publication.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
§ 102 anticipationPatents in suitUS 8,044,942 - Lam Research Corp. v. Daniel L. FlammInstitution deniedPTAB · Jul 1, 2016 · IPR2016-00469 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Lam did not show a reasonable likelihood that claims 51–63 and 68–71 were obvious over the asserted § 103(a) combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in Flamm’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Lam would prevail in challenging any of claims 51–63 and 68–71 of the ’264 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;3 and (4) when in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze this asserted ground based on obviousness with the principles identified above in mind.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also do not find Dr. Cecchi’s supporting testimony on this particular issue to be persuasive. Ex. 1013 ¶ 77. Dr. Cecchi’s analysis essentially repeats the arguments advanced in the Petition, and does not explain adequately how Kadomura’s short time period of about 30 seconds amounts to “a preselected time period,” as recited in independent claims 51 and 56. For these reasons, we do not credit his testimony that the combined teachings of Kadomura, Wang ’485, and Kawamura properly account for all the limitations recited in independent claims 51 and 56.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“effectuat[ing] the change from the first substrate temperature to the second substrate temperature within a preselected time period.” Ex. 1001, 24:23– 26, 24:55–61 (emphasis added). We view the parties’ arguments regarding “a preselected time period” as dispositive to Lam’s Petition. In its Petition, Lam relies on Kadomura’s first embodiment, particularly its disclosure of adjusting the temperature of the specimen between etching steps in a short time period of about thirty (30) seconds, to teach “a preselected time period,” as recited in independent claims 51 and 56. Pet. 22, 25, (citing Ex. 1002, 6:18–62, 7:19–30; Ex. 1013 ¶ 77); see also id. at 33–34 (arguing the same). In response, Flamm contends that Lam only relies upon Kadomura to teach this particular limitation required by independent claims 51 and 56. Prelim. Resp. 5; see also id. at 10 (arguing the same). Flamm argues that, although Kadomura discloses a short time period of about 30 seconds, there is no disclosure in Kadomura that this time period was preselected. Id. at 5. According to Flamm, this time period disclosed in Kadomura merely teaches what the time period would be or likely would be—not what it was “preselected” to be. Id. We agree with Flamm that Lam does not account properly for “a preselected time period,” as recited in independent claims 51 and 56. Kadomura discloses that, in its first embodiment, the temperature of the specimen is cooled rapidly between etching steps “within a short period of time of about 30 [seconds].” Ex. 1002, 6:52–55. Kadomura further discloses that, by conducting the etching steps in the same etching device, the temperature of the specimen may be adjusted in “a short period of time.” Id. at 7:22–24. Lam, however, does not direct us to, nor can we find, a disclosure in Kadomura indicating that its control device is capable of pre- selecting the time period for adjusting the temperature of the specimen between etching steps. In other words, Kadomura is silent with respect to the control device adjusting the temperature of the specimen between etching steps to a certain temperature within a pre-selected time period. slip op. at 16
§ 103 obviousnesscites Phillips · KSR · Graham
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.