- Intel Corporation v. Besang Inc.InstitutedPTAB · Dec 13, 2023 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1 and 13–17 on all petition grounds, finding a reasonable likelihood of success on at least one challenge to claim 13 based on combinations involving Lee or Johnson.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“stackable add-on layer” requires something more than just any type of layer that is directly or indirectly adhered to the substrate or dielectric layer. First, the plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer.” Ex. 1001, 12:29–32. Second, the written description of the ’702 patent strongly suggests that a “stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate or a dielectric layer above the that in the invention “a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” Id. at 1:47–50 (emphasis added). Likewise, the specification explains that an SOI layer refers to “a relatively thin, single crystal portion of a semiconductor wafer that can be cleaved and bonded to another previously fabricated wafer, or similar type of substrate.” Id. at 4:47–51. “In this context,” the ’702 patent explains, “the SOI layer may be thought of as an attachment layer, or stackable add-on structure which is suitable for bonding to a semiconductor substrate already containing devices and/or interconnections.” Id. at 4:53– 57. Again, this suggests that a “stackable add-on layer” is separately formed and then bonded to a previously fabricated substrate. Given the structure of the claims and the description of the invention in the written description of the ’702 patent, we preliminarily construe “stackable add-on layer” to be a layer that is formed separately from the substrate and then bonded to the substrate or a dielectric layer above the substrate. We do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate or dielectric layer without being added to a separately formed substrate. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownOther
“Independent claims 1 and 13 do not specify how the stackable add-on layer is bonded to the dielectric layer. Nor does Petitioner assert that the plain and ordinary meaning of “bonding” refers to “wafer bonding.” Thus, to limit the claims to wafer bonding, Petitioner must identify a clear expression of intent in the ’702 patent to define “bonding” as “wafer bonding,” or a clear disavowal of claim scope demonstrating that non-wafer bonding methods are outside the reach of the claims. See Thorner v. Sony Comp. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner does not contend that the patentee acted as its own lexicographer by defining “bonding” as “wafer bonding,” a term that does not even appear in the ’702 patent. Id. at 1365. Nor are we directed to any clear disavowal indicating that methods of bonding other than “wafer bonding” are outside the scope of the claims. Id. at 1366. Thus, we decline to construe “bonded” in claims 1 8 Wafer bonding is a method in which semiconductor layers are formed on separate wafers and then bonded together to create a stacked semiconductor structure. Ex. 1003 ¶ 41. that the standards for lexicography and disavowal are “exacting”). As noted by Petitioner, the ’702 patent describes an SOI layer that is wafer bonded to a previously fabricated substrate. Ex. 1001, 4:47–53. Independent claims 1 and 13, however, do not require an SOI layer, and the disclosure of a single embodiment in which wafer bonding is used is not sufficient to import such a limitation into the claims. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1354 (Fed. Cir. 2012) (“While claim terms are understood in light of the specification, a claim construction must not import limitations from the specification into the claims.”); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (“Nonetheless, this court will not countenance the importation of claim limitations from a few specification statements or figures into the claims.”). In summary, we preliminarily construe “stackable add-on layer . . . the first stackable add-on layer is/being bonded” to require a separate layer that is formed apart from the substrate and then subsequently bonded to the substrate or a dielectric layer above the substrate.9 We do not construe independent claims 1 or 13 to require any particular form or method of bonding.10” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“The evidence of record demonstrates that Petitioner and Micron jointly developed the 3D NAND technology that is generally at issue in the district court litigation, and the parties have acknowledged “their long-term joint development partnership” for this technology. Ex. 1013 (district court complaint); Ex. 2010 (“Micron and Intel Extend their Leadership in 3D NAND Flash memory.”); Ex. 2016 (discussing the end of Intel’s and Micron’s NAND partnership). There is no assertion, however, that all 3D NAND technology infringes the challenged claims of the ’702 patent, and Micron and Intel are not accused of infringing the ’702 patent based on the same products and are not co-defendants in any district court litigation. Further, Patent Owner presents no persuasive evidence that the two parties collaborated on the development of either of the accused products, as opposed to general 3D NAND technology, and Petitioner represents that the two parties filed their petitions independently and without coordination or cooperation. Prelim. Reply 1–2; Ex. 2016, 1 (noting that each company sought to independently develop 3D NAND technology in order to “forge” their own path for future NAND development and “better optimize the technology and products for their individual business needs”). relationship between Petitioner and Micron, and Petitioner is not the same petitioner as the petitioner in IPR2023-00900. Thus, General Plastic factor 1 weighs against discretionary denial.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The stipulation filed in the Texas litigation mitigates, to an extent, concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.12 Director’s Memo at 7. Similarly, Petitioner’s stipulation in the Oregon litigation (i.e., that it will not pursue an invalidity defense that the claims challenged in this IPR proceeding are invalid based on grounds that were raised or reasonably could have been raised during the IPR) also mitigates concerns of potentially conflicting decisions and duplicative efforts. Patent Owner contends Petitioner’s stipulation falls short of a Sotera stipulation by carving out any circumstance that “otherwise terminate[s] the instituted IPR.” Prelim. Sur-reply 2–3. Patent Owner interprets this carve- on the patent application publication of the Lee patent. Ex. 1007. Because the disclosures of the Lee patent and patent application publication are substantively identical, we consider the stipulation not to pursue any obviousness ground based on Lee to apply with equal force to Lee’s patent application publication. 12 The stipulation in the Texas litigation bars the defendant from pursuing “any obviousness ground that includes” Lee or Watanabe. IPR2023-00900, Exhibit 1031. Here, Petitioner’s grounds 1A–1F challenge claims 13–17 based in whole or in part on Lee, and grounds 2A–2C and 3 challenge claims 1 and 13 based on combinations of references that do not include Lee or Watanabe. Pet. 3. As such, the grounds to be resolved by the PTAB will differ somewhat from those presented in the Texas litigation. written decision, thereby rendering the stipulation an “empty promise” as the district court in the Texas litigation will undoubtedly resolve validity before a final written decision in this case. Id. at 3. We disagree. We do not understand Petitioner’s stipulation to require that a final written decision be issued before the stipulation takes effect. Rather, so long as an inter partes review is instituted, and until such time as the IPR is terminated or vacated, Petitioner will not pursue any invalidity defense before the district court that is “based on grounds that were raised or could have been raised during the IPR.” Ex. 1034. In summary, given the stipulations filed by the petitioners in the Oregon and Texas litigations, it appears that there will be minimal, if any, overlap between the issues raised in the petitions and in the parallel district court proceedings. Accordingly, Fintiv factor 4 weighs against discretionary denial.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Amperex Technology Ltd. v. Semiconductor Energy Laboratory Co., Ltd.Institution deniedPTAB · Dec 5, 2023 · IPR2023-01016 · APJ Christopher M Kaiser · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted Shim- or Fujiki-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in chemistry, chemical engineering, or materials science and at least five years of experience in the field of batteries and battery materials.” Pet. 33. According to Petitioner, “[i]ndividuals with different education and additional experience could still be of ordinary skill in the art if that additional experience compensates for a deficit in their education and experience.” Id. (citing Ex. 1003 ¶¶ 83–91). On the present record, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art. Prelim. Resp. 19–20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’828 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’828 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As explained more fully below, we need not construe any claim terms to determine that Petitioner fails to show sufficiently that the prior art teaches or suggests the subject matter of the challenged claims. Thus, after considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner relies on Shim and Fey to show that a person of ordinary skill in the art would have understood that fluorine would be present in a crack portion of the Shim or Shim/Lee particle, because the requirement for fluorine to be present in a crack portion appears in all the challenged claims, and because Petitioner does not show sufficiently that Shim and Fey would have suggested the presence of fluorine in a crack portion, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Shim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,741,828 - Infineon Technologies AG v. Amatech Group LimitedSome claims unpatentablePTAB · Dec 1, 2023 · IPR2022-00951 · APJ Stacey G White · IPR · Final written decision
Claims 1, 2, 4–6, and 8–10 are unpatentable as obvious; claims 3 and 11 were not shown unpatentable, and claim 7 was not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find that Petitioner’s description is consistent with the prior art and patent specification currently before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For purposes of our Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” See Pet. 8. In addition, we note that we agree with Patent Owner’s statement that the distinction between the parties’ proposals is not material to any dispute before us and we find that our determinations would be the same under either definition of the person of ordinary skill in the art.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We are not persuaded that Dr. van der Weide’s cited testimony is of a nature that should lead us to give his testimony no weight. We note that Patent Owner did not move to strike or exclude Dr. van der Weide’s testimony. When considering credibility and weight of evidence below, we consider Dr. van der Weide’s testimony as a whole as well as all other evidence of record and accord it the appropriate weight.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“provide an express construction of the full breadth of a claim term. “The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). As such, we proceed in line with Federal Circuit case law, which “prescribes—deciding only the issues necessary to resolve the dispute before it.” Nichia Corp. v. DSS, Inc., No. 2022-1704, 2023 WL 7211097, at *3 (Fed. Cir. Nov. 2, 2023) (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)). The Federal Circuit has long recognized that “[c]laim construction is a matter of resolution of disputed meanings and technical scope” and that claim construction may be required in an obviousness context “when the meaning or scope of technical terms and words of art is unclear and in dispute and requires resolution in order to determine obviousness.” U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997). In order to determine whether Petitioner’s obviousness grounds meet their required burden of proof, we need not expressly state the full scope of this claim term. Thus, we are within our authority to proffer a construction that determines the scope of a claim term in a manner sufficient to determine whether the asserted art teaches the claim. In other words, there may be other ways to meet the disputed limitation, but for the purposes of our Decision, it is proper to expressly determine a claim term’s scope only as much as is required to resolve the disputed issues before us.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the invention(s), but rather as examples of some of the embodiments.” Id. at 25:65–26:1; see also id. at 6:18–20 (embodiments “should be construed as illustrative rather than limiting”), 5:22–24 (“non-limiting example”). The Federal Circuit has noted that “[e]mbodiments in the specification—even if there is only one embodiment—cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (citing Hill- Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014)). After reviewing the complete record, we see no such manifest exclusion or restriction in the ’240 patent specification. We decline Patent Owner’s request to limit the claims to the described single-frequency embodiments. See Phillips, 415 F.3d at 1323. We need not provide further express construction of this claim language for purposes of this Decision.” slip op. at 23
Patent outcomesUS 9,165,240 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,165,240 - PTAB · Nov 28, 2023 · IPR2023-00920 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that claims 12–18 would be unpatentable over Jiang, Jiang2, and Jiang3.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’218 patent. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner’s “generic motivations” to “increase power savings” fail to provide sufficient motivation to modify Jiang’s power gating system to supply multiple voltages. Prelim. Resp. 33– 39. Patent Owner asserts that the devices in each reference operates effectively and that Petitioner has not offered any motivation to modify what Jiang has already achieved. Pet. 38–39. On the present record, we disagree with Patent Owner. Petitioner asserts that a POSITA would have understood that different portions of a chip have different power requirements and that providing high voltages to the portions requiring high voltages and providing lower voltages (as opposed to no voltage) to the portions of the rest of the chip that require lower voltages would result in power savings. See Pet. 26–27; Ex. 1003 ¶¶ 90–93. Whether it would have been obvious to replace Jiang’s global power mesh with a mesh having two separate power sources is an issue that is best resolved on a full record.” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“A reference patent or published patent application can be entitled to the benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes on two conditions. First, the provisional application must provide sufficient support for at least one claim in the reference patent or published patent application. See Dynamic Drinkware, 800 F.3d at 1381 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Second, the provisional application must provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or published patent application. See In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application.”); Ex parte Mann, 2016 WL 7487271, at *5 (PTAB Dec. 21, 2016) (stating that the party claiming priority also must show that the subject matter relied upon in the non-provisional is sufficiently supported in the provisional application [and that t]his subject matter test is in addition to the comparison of claims required by Dynamic Drinkware”); Here, Petitioner fails to sufficiently show that Chiu’s Provisional Application (Ex. 1011) provides written description support for either (1) any claim of Chiu or (2) the subject matter that Petitioner relies upon in Chiu for prior art purposes. Petitioner provides no comparison or analysis of the material disclosed in Chiu’s Provisional Application with either Chiu’s claims or the subject matter in Chiu that Petitioner relies upon in its unpatentability argument. See Prelim. Resp. Petitioner’s invitation to the Board to compare the disclosure of Chiu and Chiu’s provisional application is not sufficient to meet this burden. See Benitec Biopharma Ltd. v. Cold Spring Harbor Labs., IPR2016-00016, Paper 8 at 9 (PTAB Mar. 31, 2016) (stating the petitioner failed to provide sufficient evidence that the asserted reference qualified as prior art when it failed to provide expert testimony or sufficient evidence that the provisional application provides support for the claims in the asserted reference); Comcast Cable Commc'ns, LLC v. Promptu Sys. Corp., IPR2018-00345, Paper 10 at 25–26 (PTAB July 2, 2018) (stating the petitioner’s “barebones analysis” was insufficient to show “how the [provisional underlying the asserted reference] provides support for the subject matter relied upon [in the asserted reference]”). Accordingly, Petitioner has not shown that Chiu is entitled to the priority date of its provisional application, and thus has not sufficiently shown that Chiu qualifies as prior art to the ’218 patent.” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner. As noted above, claim element 12[c] recites “a global power mesh, coupling to the first local power mesh and the second local power mesh, to provide the power needed by the first power domain and the second domain separately.” Neither party has provided an express or detailed claim construction analysis of this claim language. Nor does the ’218 patent appear to indicate that the phrase recited in claim element 12[c] should be afforded any special definition. See Ex. 1001. A plain and ordinary reading of this phrase, however, indicates that the global power mesh must be able to provide power needed by the first and second power domains separately. Pet. 21–22; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 78–85. Petitioner sufficiently shows that Jiang’s global power mesh is able to provide power separately to the first and second power domains by selectively turning off and on each domain’s sleep transistors, each of which is provided power by the global mesh.14 Pet. 22–23 (citing Ex. 1003 ¶ 81). Dr. Subramanian explains that the use of sleep transistors between the global power mesh and the first and second local power meshes enables the global power mesh to power each domain “separately” by 14 Petitioner has sufficiently shown, and Patent Owner does not dispute, that Jiang teaches sleep transistors are independently operable. Pet. 22–23; Ex. 1004, Abstract, 1–2, Fig. 1(b); Ex. 1003 ¶¶ 81–85. selectively turning off each domain’s sleep transistor when desired. Ex. 1003 ¶ 81 (citing Ex. 1004, Abstract, 1, 2). Dr. Subramanian further explains that turning off the power to the local power mesh, through use of the sleep transistors, will necessarily turn off the power to the macro (power domain) underlying the partial local power mesh. Ex. 1003 ¶ 81. Thus, Petitioner’s argument and evidence that Jiang discloses connecting global power mesh power VDD to the gated macros (power domains) through the sleep transistors and the local meshes provides a sufficient showing that Jiang discloses a global power mesh that provides power to the power domains through the sleep transistors and local power meshes.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,006,218 - PTAB · Nov 17, 2023 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 13–17 on all petitioned grounds after finding a reasonable likelihood of prevailing on at least one obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for institution 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, Petitioner demonstrates a reasonable likelihood of prevailing with respect to claims 13–17 of the ’702 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“On this preliminary record, we agree with Petitioner that the intrinsic record does not support a construction of “stackable add-on layer” that encompasses formation of memory cells by sequential deposition on a plain language of the claim does not require merely a “layer” having a plurality of vertically oriented semiconductor memory cells, but rather “a stackable add-on layer” having a plurality of vertically oriented semiconductor memory cells that is bonded to the dielectric layer. Ex. 1001, 12:29–32. The written description of the ’702 patent strongly suggests that such “a stackable add-on layer” is formed separately from the substrate and then stacked on and bonded to the substrate. Id. at 1:47–50 (“Briefly, a plurality of vertically oriented semiconductor memory devices, or cells, may be added to a separately fabricated substrate that includes electrical devices and/or interconnect lines.” (emphasis added)). It is unclear how memory cells sequentially deposited on a substrate could be considered to be a plurality of memory devices “added to a separately fabricated substrate.”” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends one of ordinary skill in the art would have combined Watanabe and Lee because Watanabe discloses an alternate method of forming a memory device that is applicable to the memory devices of Lee and Watanabe, and Watanabe discloses that its “stacking method” improves the accuracy of the wiring and provides “a semiconductor memory device with improved integration density” and “low interconnection wire resistance.” Id. at 72.” slip op. at 24
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“3. Factor 3 – Investment in the parallel proceeding by the court and the parties Under the third Fintiv factor, we consider the “investment in the parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6. Petitioner contends that, at the time of the filing of the Petition, the court had not yet held a case management conference or set a Markman or trial date, and that no hearings or substantive activities or hearings have occurred in the case. Pet. 75. “Because the investment in the trial has been minimal and Petitioner acted diligently” in filing the Petition, Petitioner contends “this factor weighs strongly against discretionary denial.” Id. Patent Owner contends the co-pending district court case has been moving forward, with infringement and invalidity contentions being exchanged and discovery and deposition underway. Prelim. Resp. 34. Patent Owner further contends that by the institution deadline of November 28, 2023, the parties will be in the “home stretch of discovery.” Id. at 34– 35. “Based on the considerable resources already expended on contentions and discovery in the district court,” Patent Owner argues that Fintiv factor 3 weighs in favor of denying institution. Id. at 35. directed to no substantive rulings by the district court to suggest that it has invested considerable resources in the case. Nor are we presented with evidence that the parties have expended significant resources in the district court litigation. Fact discovery is not scheduled to be completed until July 1, 2024, and expert discovery is to be completed by August 5, 2024, i.e., more than seven months after the institution deadline. Ex. 2001, 3. Accordingly, we determine that Fintiv factor 3 weighs against discretionary denial of institution. 4. Factor 4 – Overlap between issues raised in the petition and in the parallel proceeding Under the fourth Fintiv factor, we consider the “overlap between issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11 at 6. Petitioner contends that in the district court litigation Patent Owner asserts infringement under only claim 13, whereas the Petition challenges claims 13–17. Pet. 76. Petitioner argues that because it is challenging more claims than are asserted in the district court litigation, this proceeding “is the only venue in which the invalidity challenges against several claims in the ’702 Patent will be adjudicated,” and this proceeding will promote efficiency because it “will resolve disputes against future district court defendants.” Id. Patent Owner responds that Petitioner’s “invalidity contentions challenge the same Claims 13–16 based on the identical Watanabe, Lee, and Endoh references relied upon in the Petition.” Prelim. Resp. 35. Petitioner responds that it has signed and served a stipulation “not to pursue in the parallel district court proceeding any obviousness ground that includes the primary references in the Petition.” Prelim. Reply 2. According to Petitioner, “[t]his stipulation mitigates concerns of potentially the PTAB.” Id. Patent Owner argues in response that Petitioner’s “meager agreement” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,378,702 - Mahle Behr Charleston Inc. v. Frank Amidio CatalanoInstitution deniedPTAB · Nov 15, 2023 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“On this record, we determine that Petitioner advances Dr. Medlin’s testimony to make out a claim limitation that is not suggested, much less taught, by the text of the prior art reference at hand. Because that testimony lacks objective support or adequate technical reasoning, it is entitled “little weight” and, moreover, is insufficient to support institution of trial. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential). Dr. Medlin’s remaining testimony relies on the testimony we have discussed so far. Ex. 1004 ¶¶ 201–204, 207–210, 224–226. Accordingly, this testimony does not show sufficiently that Tomosada would have suggested to a person of ordinary skill in the art that anodes should be placed within 10 inches of Tomosada’s hot liquid inlet. Because Petitioner relies on Dr. Medlin’s testimony to show that a person of ordinary skill in the art would have understood that Tomosada suggested placing an anode within 10 inches of a hot liquid inlet to a radiator, and because that testimony does not show sufficiently that a person of ordinary skill in the art would have had such an understanding, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to any claim challenged on the basis of Tomosada.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–19. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Nevertheless, “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, metallurgical engineering, or materials science engineering, and have two or more years of experience in mechanical engineering, metallurgical engineering, or materials science engineering and/or corrosion prevention system design.” Pet. 16 (citing Ex. 1004 ¶¶ 72–75). According to Petitioner, “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of more formal education (e.g., a Ph.D.) and less technical experience,” or vice versa. Id. at 16–17. “To the extent necessary, the [person of ordinary skill in the art] may have collaborated with other skilled artisans, such that the individual and/or team collectively would have had experience and/or knowledge or particular characteristics of a radiator system.” Id. at 17. “For the limited purpose of [its] Preliminary Response, Patent Owner does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’494 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’494 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Construction In an inter partes review, we construe 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) (2022). 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. Both parties argue that we need not construe any terms in order to decide whether to institute trial. Pet. 17; Prelim. Resp. 8. We agree. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to construe any terms expressly 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 8
Claim constructioncites Phillips · KSR · Graham - Moleculight, Inc. v. Swift Medical Inc.All claims unpatentablePTAB · Nov 3, 2023 · PGR2022-00041 · APJ Brian D Range · PGR · Final written decision
Claims 1–20 were cancelled; substitute claims 21–24 and 27–38 were unpatentable as obvious, and withdrawn claims 25–26 were not reached.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the record as a whole with emphasis on the technical level the ’345 patent’s disclosure and asserted prior art, we agree with Patent Owner that a degree in physics and/or optics rather than engineering could be sufficient. We disagree, however, that “at least two years work experience” is unclear. “At least two years work experience” refers to two or more years of experience working in the field of design, operation, and functioning of imaging systems. We, thus, determine that that a person of ordinary skill in the art as of the date of the invention would have had at least a bachelor’s degree in engineering, physics, or optics with relevant coursework, and the equivalent of at least two years of work experience in the design, operation, and functioning of imaging systems, amounting to familiarity with concepts related to illumination and detection schemes for optical imaging systems. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this decision, we determine that express claim construction is unnecessary. Our decision here would be the same whether based on plain and ordinary meaning or based on the various alternatives Petitioner presents when addressing claim construction. Pet. 9–14.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The matter now before us is distinguishable from Xerox. As we explain below, Petitioner establishes unpatentability of the amended claims by extensively citing evidence including the prior art at issue. Petitioner and Dr. Georgakoudi properly map the Patent Owner’s amended claims to the explicit teachings of the asserted art. Sur-Reply 1–2. Thus, the position of Petitioner and Dr. Georgakoudi is not unduly conclusory. Rather, Dr. Georgakoudi’s testimony is generally credible because it is consistent with and tied closely to the teachings of the cited art. Thus, when choosing whether or not to cite Dr. Georgakoudi’s testimony and consider whether or not it is credible with respect to any given issue, we do so while considering the record as a whole.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“5. Reason to Combine We first address the combination of Petit and Fawzy . Petitioner argues that it would have been obvious to a person having ordinary skill in the art to combine Petit’s long pass filter with Fawzy’s imaging apparatus. Opp. 8. Petitioner’s argument is supported by a preponderance of the evidence. Both Fawzy and Petit teach devices for capturing and analyzing images of dermatological conditions based on light wavelengths reflecting off a patient’s skin. Id. (citing Ex. 1008 ¶¶ 89, 92; Ex. 1020 ¶ 88). The preponderance of evidence supports that a person of ordinary skill in the art would have understood that emission filters, such as those taught by Petit, are a well-known mechanism to predictably filter out wavelengths of light that are not relevant to the imaging at hand. Id. (citing Ex. 1020 ¶ 87). A person of ordinary would have understood that filtering out undesired wavelengths could avoid undesired interference. Id. at 8–9 (citing Ex. 1008 ¶¶ 44,80). Petit teaches a long-pass filter having a cut-on wavelength of 450±25 nm. Ex. 1020 ¶ 98. Such a filter would be helpful in accomplishing Fawzy’s goal of “control[ling] optical coupling of the digital camera to capture only reflected light originating from the interaction of light from the spectral light source with an object being imaged.” Ex. 1008 ¶ 107. The combination would also be helpful for determining effective treatment as Petit teaches. Ex. 1020 ¶ 87. As such, we determine that a person having ordinary skill in the art would have had reason to combine Petit’s long pass filter with Fawzy’s imaging apparatus and would have had a reasonable expectation of success in making the combination.” slip op. at 18
Patent outcomesUS 11,266,345 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,266,345 - PTAB · Oct 26, 2023 · IPR2023-00789 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8, and 9 on all three § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’245 patent. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[a]s of May 19, 2009, a person of ordinary skill in the art (“POSITA”) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or an M.S.E.E. and 1-2 years of professional experience in the field of integrated circuit design; or a Ph.D. in electrical engineering.” Pet. 25–26 (citing Ex. 1003 ¶ 4). Although phrased slightly differently, Patent Owner provides essentially the same definition of a POSITA. In particular, Patent Owner asserts that “[a] person of ordinary skill in the art of this technology at the time of the invention would have had at least a bachelor’s degree in electrical engineering or an equivalent field and at least 3‒4 years of professional experience in the field of integrated circuit design.” Prelim. Resp. 14. Patent Owner further argues that “[s]omeone with additional education but less professional experience may qualify as a POSITA, such as someone with a master’s degree in electrical engineering and 1‒2 years of professional experience in the field of integrated circuit design or someone with a Ph.D. in electrical engineering.” Id. regarding the level of one of ordinary skill in the art. We also note that this definition of a POSITA appears to be consistent with the level of ordinary skill in the art that is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Based on the present record, we agree with Patent Owner that the term “spiral inductor” recited in the preamble is limiting. Without the preamble, the body of claim 1 does not recite a structurally complete invention. The body of claim 1 recites a number of “metal layers” having a collection of “segments,” number of via sets, and limitations requiring certain segments and vias to construct a number of shunt windings and a crossover region. Without the preamble, it is unclear from just the recitations in the body of claim 1 what field of art the claim relates to. The preamble is therefore necessary to provide context as to which field of art the recited limitations pertain so as to understand limitations in the claim body. As such, the term “spiral inductor” recited in the preamble is necessary to give life, meaning, and vitality to the claim. dependent claim 8, thus further indicating that the preamble of claim 1 is a necessary component of the claimed invention. See Pitney Bowes, F.3d at 1305 (stating that a preamble claim should be construed as limiting the scope of the claim “[i]f the claim preamble, when read in the context of the entire claim, recites limitations of the claim”); Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (“a preamble phrase that provides antecedent basis for a claim limitation generally limits the scope of the claim”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“segment and the first set of vias construct a first shunt winding; the second segment, the fifth segment and the second set of vias construct a second shunt winding.” Ex. 1001, 9:59–62 (emphasis added). Petitioner argues that one of ordinary skill in the art would have understood that “shunt windings,” as claim 1 recites, means “windings in parallel.” Pet. 27. Petitioner contends that the ’245 patent describes a first segment, a fourth segment, and a first set of vias as constructing a first shunt winding and a second segment, fifth segment, and a second set of vias as constructing a second shunt winding, which are depicted in the drawings. Id. at 27–28 (citing Ex. 1001, 1:64–67, 4:22–24, 6:27–28, Figs. 2, 6B). According to Petitioner, “[t]he 245 patent distinguishes a ‘shunt winding’ from a ‘serial winding’” because the ’245 patent states “symmetric spiral inductor 500 is a multi-layer stacked spiral inductor combining the first inductor 510 (i.e., the serial winding) with the second inductor 610 (i.e., the shunt winding). . .” Id. at 28–29 (citing Ex. 1001, 6:14–17, Figs. 6A, 6B). Petitioner asserts that “[t]his distinction is consistent with how a common understanding of ‘shunt’ is to place components in parallel.” Id. at 29 (citing Ex. 1020; Ex. 1021; Ex. 1003 ¶¶ 89, 113–116). Petitioner further argues that “patents and technical articles confirm this understanding.” Id. at 29–30 (citing Ex. 1018 ¶ 6, 22, 23; Ex. 1030, 1, 7, 9). Petitioner also contends that this is consistent with how Patent Owner interprets the claim language due to the interchangeable use of “shunt winding” and “parallel winding” in the Taiwanese priority application. Id. at 30 (citing Ex. 1023, 9, 23; Ex. 1003 ¶¶ 117–120). Patent Owner does not dispute Petitioner’s claim construction. At this stage of the proceeding, we agree with Petitioner’s undisputed contentions and construe “shunt windings” to mean windings in parallel.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,936,245 - PTAB · Oct 26, 2023 · IPR2023-00788 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted inter partes review of claims 1–5 and 9 on both asserted obviousness grounds, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that 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.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’582 patent. Thus, we institute an inter partes review of all challenged claims of the ’582 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that “[b]y April 16, 2014, a person of ordinary skill in the art (‘POSITA’) would have had a B.S.E.E. and at least 3-4 years of professional experience in the field of integrated circuit design; or a M.S.E.E. and 1-2 years of professional experience in the field of IC design; or a Ph.D. in electrical engineering.” Pet. 31 (citing Ex. 1003 ¶ 4). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. In light of the record before us, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. We also note that this level of ordinary skill in the art appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention” and “after reading the entire patent” and its prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313, 1321 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner states that it applies “herein the understanding of the claims set forth in Realtek’s infringement chart in the ITC Investigation.” Pet. 34 (citing Ex. 1034). Petitioner otherwise does not assert any explicit claim construction but states that it reserves “the right to challenge Realtek’s proposed constructions in litigation.” Id. Patent Owner does not provide any express claim construction for the challenged claims. See generally Prelim. Resp. We determine no express claim construction is required at this stage of the proceeding.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Muh and Niknejad. Pet. 79–110. We have reviewed Petitioner’s argument and evidence, which we discuss below, and are persuaded that Petitioner has sufficiently shown that each of the limitations of claim 1 are taught or suggested by the combination of Muh and Niknejad, and that Petitioner has articulated a reasonable rationale for combining the references to arrive at claim 1, notwithstanding Patent Owner’s arguments to the contrary.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,590,582 - Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting v. Cao Lighting, Inc.Some claims unpatentablePTAB · Sep 28, 2023 · IPR2022-00848 · APJ Brian D Range · IPR · Final written decision
Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable under § 103; claim 41 is not shown …
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 18 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52, EPRC 1:32. One requirement of this apparatus is that it comprise “a semiconductor chip” (id. at 9:66) where “said semiconductor chip is a light emitting diode (LED) chip EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction (Resp. 14) of “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor LED chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 53 (quoting Ex. 1008, 10). Notably, claim 18 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’770 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 16. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’770 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 15
- Prior constructionPrior construction adoptedTerm construed patent owner constructionDecided for patent owner
“Delaware held, with respect to related U.S. Patent 6,465,961, construed “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” Resp. 14 (citing Ex. 1024, 15–18). Petitioner responds that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1. We note that the language of claim 18 does not precisely match the language the District Court considered, it is substantively the same. The record supports a construction very similar to the construction the District Court adopts, and we reference the District Court’s reasoning. Ex. 1024, 15– 18. We, thus, construe claim 18’s recitation that “said semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as referring to “a semiconductor LED chip that is capable of emitting light greater than about 40 milliwatts.” It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“The facts above are evidence of the Krames reference’s publication as of June 29, 2000, because the facts tend to make the Krames reference’s publication as of June 29, 2000, more probable than it would be without the evidence. See Fed. R. Evid. 401(a) (defining evidence as relevant “if it has any tendency to make a fact more or less probable than it would be without the evidence”). The evidence is sufficient to support publication. Meanwhile, no evidence of record suggests that Krames was not a printed publication as of June 29, 2000. Thus, a preponderance of the evidence supports Krames’s prior art status. Patent Owner argues that Ms. Watters “never establishes a firm date when Krames was purportedly available to the relevant public.” Resp. 21. Patent Owner bases this argument by taking a tortured reading of Ms. Watters’s statement that “[m]embers of the interested public could locate a copy of [the Proceedings] on or after June 29, 2000, the date it was catalogued.” Id. (quoting Ex. 1020, 3); see also Sur-Reply 12–13. The best understanding of Ms. Watters’s statement, in view of the context of Ms. Watters explaining the library’s cataloguing process, is that a member of the interested public had two options: the person could choose to locate the Proceedings on June 29, 2000, or the person could choose to locate the Proceedings after June 29, 2000. Thus, the statement supports public availability as of June 29, 2000.” slip op. at 21
Patent outcomesUS 6,634,770 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,634,770
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.