- 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 - PTAB · Dec 8, 2023 · IPR2023-00946 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–4, 8, 10, 11, and 17–19 on all asserted grounds, based on 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
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. court has set a trial date for February 20, 2024. Pet. 4.5 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Petitioner includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Patent Owner does not. Compare Pet. 4–5, with Prelim. Resp. 11. At this stage, Patent Owner and its expert Dr. Abowd do not say if, or why, they disagree with this part of Petitioner’s articulation. See Prelim. Resp. 11–12; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Petitioner’s proposal is consistent with the types of technical problems that the ’217 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:25–48, 6:38–50. And because the remainder of Petitioner’s proposal is substantially undisputed, we adopt Petitioner’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Patent Owner may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“that the applicant intended to limit a “manipulatable input device” to the physical devices identified in the Specification, and therefore exclude the identified physical objects. To the extent Patent Owner is arguing that the amendment replacing “peripheral configured to be manipulated by the user” with “manipulatable input devices” was intended to disclaim physical objects from the scope of the claims, Patent Owner has not demonstrated that the amendment amounts to a “clear and unmistakable” disavowal. See Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1141 (Fed. Cir. 2021) (Prosecution disclaimer “attaches if a patentee ‘has that is ‘clear and unmistakable.’” (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324–26 (Fed. Cir. 2003)). Here, the amendment does not appear, based on the preliminary evidence, to be an unambiguous disavowal because it uses a different term (“manipulatable input device”) than the term from the Specification (“physical device”). Moreover, applicant’s remarks accompanying the amendment do not state that the amendment was intended to distinguish peripherals that are physical objects from peripherals that are physical devices; nor do the remarks state that the amendment was intended to exclude physical object peripherals from the scope of the claims. See Ex. 1012, 342–47.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,727,217 - PTAB · Dec 7, 2023 · IPR2023-00944 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1, 2, 5, 7, 10, 11, 15, 17, 18, 21, and 23 based on a reasonable likelihood of obviousness over Douris and Rodriguez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’222 patent. Accordingly, we institute an inter partes review as to the challenged claims on the unpatentability ground asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We also find Petitioner’s reasons to combine Douris and Rodriguez persuasive for the purposes of institution. We agree that the combination would have provided an effective way of getting the user’s attention and would have been superior to the video or audio feedback disclosed in Douris in some situations, for example, when a quiet environment must be observed or when it is too noisy. See Pet. 23–24 (citing Ex. 1002 ¶ 73). Dr. Cooperstock testifies that in view of the audio overlay information disclosed by Douris as beneficial in certain situations, “[a]n ordinarily skilled artisan would have appreciated that the same advantage attaches to haptic feedback, as it would have provided a third modality to present information to the user—the sense of touch—without impacting the user’s field of vision.” Ex. 1002 ¶ 73. At this stage, we are persuaded by Dr. Cooperstock’s testimony and we determine that Petitioner provides an adequate reason for one of ordinary skill in the art to have modified Douris’s KSR, 550 U.S. at 420 (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed”). We are also persuaded at this stage that person of ordinary skill in the art would have had a reasonable expectation that the combination would have been successful. Dr. Cooperstock testifies that the use of control signals to provide haptic feedback in augmented reality systems was well-known before March 2013. Ex. 1002 ¶ 74 (citing Ex. 1004 ¶¶ 3, 9–10). He further testifies that “Rodriguez also identifies a number of commercially available, off-the-shelf components and toolkits for implementing haptics in mobile devices,” and that Rodriguez’s descriptions are sufficient for implementing the detailed functionality without undue experimentation. Id. (citing Ex. 1004 ¶¶ 3, 9–10, 71, 98); Pet. 24. Rodriguez discloses multiple Software Development Kits that would have allowed skilled artisans to develop software to control the haptic actuators. Ex. 1004 ¶ 71. On this record, we find Dr. Cooperstock’s testimony consistent with Rodriguez and persuasive to show that a person of ordinary skill in the art would have found the prior art disclosures adequate to implement Petitioner’s proposed combination.8 Thus, Petitioner sufficiently establishes that the combination of Douris and Rodriguez teaches this limitation.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner acknowledges that in the related district court case, the court has set a trial date of February 20, 2024. Pet. 4.10 But to address any concerns regarding duplication of efforts between the related district court case and this proceeding, Petitioner provides a stipulation that it “will not pursue in the district court any grounds of invalidity against the challenged claims that were raised or reasonably could have been raised in IPR.” Id.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); see also” slip op. at 40
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,269,222 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00943 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–4, 6–8, and 11–14 on all petition grounds after finding a reasonable likelihood that claims 1 and 11 are obvious over Poupyrev and Yun.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’524 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Meta argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction, including implementation of computerbased systems and software for providing haptic feedback effects to a user.” Pet. 4–5 (citing Ex. 1002 ¶¶ 12–13). At this stage, Immersion does not contest this definition of the level of ordinary skill. See Prelim. Resp. 9. Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’524 patent, we adopt Meta’s articulation of the level of ordinary skill for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,896,524 - PTAB · Dec 6, 2023 · IPR2023-00945 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–3, 7–10, 14–17, and 20 on all petition grounds; Meta showed a reasonable likelihood of prevailing on obviousness over Nogami.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“6. Conclusion as to Claim 1 For the above reasons, we determine that Meta has shown sufficiently that Nogami teaches all the limitations of claim 1, and that based on Nogami’s teachings, a person of ordinary skill in the art would have had reason to make a system as recited in claim 1. We therefore determine that Meta is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Nogami.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The only substantial difference between the two proposals is that Meta includes experience in “determining the position and/or orientation of a device used by a user (such as a device worn on the human body),” whereas Immersion does not. Compare Pet. 4–5, with Prelim. Resp. 9. At this stage, Immersion and its expert Dr. Abowd do not say if, or why, it disagrees with this part of Meta’s articulation. See Prelim. Resp. 8–9; Ex. 2002 ¶¶ 8–12. We preliminarily determine that this part of Meta’s proposal is consistent with the types of technical problems that the ’143 patent assumes the reader would have been able to solve without detailed disclosure. See, e.g., Ex. 1001, 5:35–58, 6:48–60. And because the remainder of Meta’s proposal is substantially undisputed, we adopt Meta’s articulation of the level of ordinary skill in the art for this decision. Because this is a preliminary determination, Immersion may provide additional arguments or evidence supporting a different level of ordinary skill at trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the preliminary record, we have not identified any claim terms, including “real space,” that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Accordingly, we analyze the claim language below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,664,143 - PTAB · Dec 6, 2023 · IPR2023-00947 · APJ Michael R Zecher · IPR · Institution
Instituted IPR on claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Meta has provided a Sotera stipulation. Pet. 4; see also Prelim. Resp. 29 (Immersion acknowledging that Meta offered a Sotera stipulation). We do not agree with Immersion’s argument that we can effectively ignore the interim guidance in the Director’s Memo because, prior to her guidance, another Board panel did not find a Sotera stipulation to be sufficient to overcome a trial date scheduled significantly before the projected due date for a final written decision. Prelim. Resp. 29–30 (citing Cisco, IPR2021-00329, Paper 13). As Immersion correctly notes, the Cisco case issued in July 2021, which is roughly one year before the Director Memo issued in June 2022. See id. at 29. The Director Memo clearly states that it is “binding agency guidance,” which, in essence, abrogates any prior inconsistent holdings by Board panels regarding the application of Fintiv, including the non-precedential holding in the Cisco case relied on by Immersion. Director Memo at 3. Put simply, because Meta has provided a Sotera stipulation, the Director Memo is controlling and the Fintiv factors are not a basis for denying institution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions for the claim term “free space” in the district court case, but Meta nonetheless contends that it “does not believe any term of the ’298 patent requires express construction at this time because . . . the claims are obvious under the constructions proposed by both parties in the pending litigation, or any other reasonable construction.” Pet. 6 (citing Ex. 1007, 2–3 (“Joint Claim Construction Statement” submitted by the parties in the district court case)). In its Preliminary Response, Immersion contends that “all claim terms should be afforded their ordinary and customary meaning, as [would have been] understood by a [person of ordinary skill in the art], in the context of the [’298] patent specification.” Prelim. Resp. 9 (citing Ex. 2002 ¶¶ 37, 38 (Declaration of Gregory Abowd, D.Phil.)). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4–5 (citing Ex. 1002 ¶¶ 12, 13). Relying on the testimony of Dr. Abowd, Immersion offers the same assessment of the level of ordinary skill in the art, except Immersion excludes industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body. Prelim. Resp. 8–9 (citing Ex. 2002 ¶ 11). The level of skill advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer science, or an equivalent degree. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise its arguments exclusively on its own industry experience. To the extent necessary, and for purposes of institution, we adopt Meta’s assessment of the level of ordinary skill in the art because Dr. Cooperstock’s identification of relevant industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body, is consistent with the ’298 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The dispute between the parties appears to center on how Nogami’s system assigns reference intensity levels to each of stimulation generation units 10–12 worn by user 1. Relying on the testimony of Dr. Cooperstock, Meta asserts “[i]t would have been obvious to implement Nogami to provide an identifier for each stimulation generation unit [10, 11, and 12] in order to allow CPU 201 to distinguish and associate it with the region of the body [of user 1] on which it is worn.” Pet. 33 (quoting Ex. 1002 ¶ 89). At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because it is consistent with Nogami’s disclosure that CPU 201 generates operation setting information (e.g., the reference intensity levels) for controlling the operation of stimulation generation units 10–12, which can vary based on whether these stimulation generation units are located in attention range 50. Ex. 1003 ¶¶ 120, 174, Fig. 4, step 406. Dr. Cooperstock further testifies that “[t]he concept of an ‘identifier’ for a peripheral is a basic concept in computer science or engineering” because [i]t was elementary knowledge of ordinary skilled artisans that virtually all objects on a computer capable of being operated on or manipulated by a computer – such as peripheral device, a computer file, and even a location within the computer’s memory – are associated with an identifier that allows the computer to identify the object and distinguish it from other objects in the computer. Ex. 1002 ¶ 90. At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because Nogami discloses an example of using an identifier in this way. That is, Nogami disclose using barcode 45 that “indicates ID [identification] information (e.g., an ID) unique to the stimulation generation unit 10.” Ex. 1003 ¶ 206, Fig. 11. Although Nogami discloses the example of barcode 45 only in relation to stimulation generation unit 10, it seems reasonable for a person of ordinary skill in the art to infer this teaching of barcode 45 equally applies to stimulation generation units 11 and 12 so that CPU 201 may also use barcode 45 as unique identifiers for these two stimulation generation units to distinguish them from stimulation generation unit 10. See KSR, 550 U.S. at 418 (An obviousness evaluation “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.”). Taking into account Nogami’s disclosure with respect to assigning different reference intensity levels depending on the region of the body of user 1 on which stimulation generation units 10–12 are worn, together with Nogami’s teaching or suggestion of using an identifier (e.g., barcode 45) that indicates ID information unique to each of stimulation generation units 10– 12, we are persuaded that the preliminary record supports that it would have” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,248,298 - 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 - Hebei Huatong Wires And Cables Group Co, Ltd. v. Gulf Coast Downhole Technologies LLCInstitution deniedPTAB · Nov 22, 2023 · IPR2023-00908 · APJ James J Mayberry · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find, upon review of the information in the Petition and evidence of record, that Petitioner fails to demonstrate a reasonable likelihood that Hurley discloses that its separation layer 52, even when formed of flexible armor (see Pet. 26) is structured to be hermetically sealed or maintain a positive or negative pressure as required by claim 1. Petitioner fails to direct us to sufficient evidence to support a finding that separation layer 52 is structured to be hermetically sealed or maintain a positive or negative pressure. Dr. Ballato does not provide any testimony in support.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc., (denying institution after determining that showing that the references are analogous art and could be combined does not necessarily establish a sufficient rationale for combining the references). The Petition does not provide any contentions directed to why a person having ordinary skill in the art would have been motivated to combine Bowker’s teachings with Hurley to arrive at the claimed invention. As such, the Petition fails to provide a reason, supported by rational underpinnings, to combine the teachings of Hurley and Bowker and, accordingly, fails to demonstrate obviousness. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Dr. Ballato’s Declaration adds nothing to Petitioner’s analysis. The Declaration merely repeats what is in the Petition and provides no support for the testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). Accordingly, the Petition fails to provide information sufficient to demonstrate for institution that the combination of Hurley and Bowker renders claims 1–5, 11, 13, 18–20, and 22 unpatentable under 35 U.S.C. § 103(a) over Hurley and Bowker. Cf. Apple Inc. v. Corephotonics, Ltd., 81 F.4th 1353, 1360 (Fed. Cir. 2023) (“We held that, under the [Administrative” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner’s contention with respect to motivation is directed merely to a motivation to consult Bowker. That is, Petitioner’s contention is directed to whether Bowker is analogous art to the ’565 patent. We agree it is. However, “[o]bviousness requires, inter alia, a finding that a skilled artisan would have been motivated to combine the teachings of prior art in such a way that the combination discloses the claimed limitations.” Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023) (emphasis added). This inquiry is separate from the requirement that the prior art is analogous. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003–04 (Fed. Cir. 2023) (“Prior art references are applicable to the obviousness inquiry only when they are analogous to the claims being challenged.”); Johns Manville Corp. v. Knauf Insulation, Inc.,” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,581,565 - 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
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.