• CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentable
  PTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand

  Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.

  RulingsRemand decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38

  Patent outcomesUS 10,647,861 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,647,861
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 25, 2025 · IPR2023-01382 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–3 were not shown unpatentable under any of five § 103 grounds because Petitioner failed to establish sufficient motivation to modify or combine the prior art.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “A petition must identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3) Here, Petitioner merely provides general assertions about multiple references, without clearly identifying how, or why a POSITA would have been motivated, to modify the processes disclosed in those references to arrive at the claimed invention. Thus, the Petition does not state with particularity that Saxler’s particular technique for etching is to be used instead of Beach’s etching step when substituting Beach’s self-aligned process for Saxler’s two mask process. Nor does the Petitioner provide a sufficient reason, absent hindsight, why a POSITA would have been motivated to combine the references to result in a process that forms Saxler’s Modified Figure 1A. Thus, for these additional reasons, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Saxler, Beach, and Shenoy.” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Both parties agree that the differences between the definitions do not impact the analysis. Resp. 11; Reply 2. 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 ’347 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 ’347 patent and the prior art. We also note that our Decision would be the same under either parties’ definition.” slip op. at 13

  • Expert testimonyOther

    “Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

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

    “remove the recess in Saxler Figure 1A to arrive at the allegedly enhancement mode transistor of Modified Figure 1A. Contrary to Petitioner’s assertions in its Reply and at the hearing, the Petition makes no argument that a POSITA would have removed the recess from Saxler Figure 1A to realize the benefits of an enhancement mode transistor. See Reply 4–5; Pet. 24–68. Rather, the Petition merely asserts that a POSITA would have understood that the gate recess of Figure 1A is optional without providing any persuasive reason why a POSITA would have removed the gate recess but retained the sloped sidewalls of Figure 1A. Pet. 25, 40, 45. For example, Petitioner asserts that Saxler’s gate contact may be “recessed or non-recessed” and that when the gate recess shown in Figure 1A is not utilized, Saxler would have the structure of Saxler Modified Figure 1A. Pet. 25 (citing Ex. 1003 ¶ 81; Ex. 1007 ¶ 52, 66); see also Pet. 40, 45 (citing Ex. 1007 ¶ 52). Neither of these paragraphs provide sufficient motivation to a POSITA to remove the gate recess from Saxler Figure 1A. Saxler paragraph 52 states: Exemplary devices according to some embodiments of the present invention are schematically illustrated in FIGS. 1A through 6. Thus, while embodiments of the present invention are described herein with reference to a recessed gate structure or a non-recessed gate structure, other embodiments of the present invention may include or not include a gate recess. Accordingly, embodiments of the present invention should not be construed as limited to the particular exemplary embodiments described herein but may include any suitable structure having a cap layer and/or passivation layer as described herein. Ex. 1007 ¶ 52. Petitioner’s expert, Dr. Shealy states that he understands paragraph 52 to mean that it is “fair game to pull the recess out of any of those figures [Figures 1A through 6].” Ex. 2004, 39:12–21. Dr. Shealy, however, also clarifies that “[a]s I said before, I think you could take all the embodiments and bring in which ones you want, depending on what you’re trying to accomplish.” Ex. 2004, 40:24–41:1. During the hearing, Petitioner admitted that Dr. Shealy’s “statement to modify the reference depending on what you're trying to accomplish” means that “a POSITA may modify with reason to do so. A POSITA would have removed Saxler’s recess to obtain the benefits of enhancement-mode.” Tr. 19:19–25. Again, the Petition does not provide a reason why a POSITA would have removed Saxler’s gate recess.” slip op. at 28

  Patent outcomesUS 9,748,347 not shown unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,748,347
• Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationNo claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01383 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–5 were not shown unpatentable because Petitioner did not sufficiently establish a reason to modify the asserted prior art.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We disagree with Petitioner’s argument because it fails to address Dr. Schubert’s academic and other experience with GaN transistors. Dr. Schubert is currently a tenured full professor in the Department of Electrical Computer, and Systems Engineering at Rensselaer Polytechnic Institute and was previously a tenured full professor in the Department of Electrical and Computer Engineering at Boston University. Ex. 2001, 129. Additionally, Dr. Schubert was the director of Boston University’s Semiconductor Devices Research Laboratory. Ex. 2001, 129. Dr. Schubert persuasively explains that his general expertise is in the field of electrical engineering and applied physics, including semiconductors, processing, and devices and his specific expertise is in the field of semiconductor materials (such as GaN), semiconductor devices, semiconductor integrated circuits, ohmic contacts, Schottky contacts, HEMTs, and optoelectronic devices such as light-emitting diodes (LEDs). Ex. 2001 ¶ 11, App’x A pp.129–137. His experience includes “the design, growth, fabrication, and testing of semiconductor devices as well as the employment of these devices in a variety of applications” and he is “familiar with both the design of such transistors [HEMTs] and the manufacturing processes used for FETs. Ex. 2001 ¶ 11, App’x A, pp. 129–137. He is an author or co-author of numerous text books and articles, and co-inventor of numerous patents, including those dealing with HEMT transistors and GaN devices. Ex. 2001 ¶ 13, App’x A, pp. 129–137. Petitioner fails to present any persuasive argument or evidence that Dr. Schubert’s extensive education and experience regarding GaN transistors is insufficient or lacking such that his testimony should be given little weight. Finally, we disagree with Petitioner’s additional argument that that its expert’s testimony (Dr. Shealy) should be given more weight than Patent Owner’s expert’s testimony (Dr. Schubert) because “[u]nlike Dr. Schubert, Dr. Shealy is one of the pioneer scientists in the field of GaN transistors.” Reply 34 (stating that Dr. Shealy’s research lab built the first GaN HEMT device on silicon in 1999 and citing Ex. 2002, 87:19–238). Obviousness is determined through the lens of a “person of ordinary skill in the art,” not through the lens of a person with extraordinary skill or a pioneer in the field. Given Dr. Schubert’s extensive relevant education and experience, Petitioner does not persuasively explain why Dr. Shealy’s testimony on any specific topic, or his testimony in general, should be given more weight than Dr. Schubert’s.” slip op. at 16

  • 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 argued that a person of ordinary skill in the art would have had a “at least a four-year degree in electrical engineering, chemical engineering, physics, or material science or a closely related field and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies. Additional education could substitute for professional experience and vice versa.” Pet. 11 (citing Ex 1003 ¶ 69). Patent Owner did not dispute this proposed definition prior to institution. See generally Prelim. Resp. In our Decision on Institution, we adopted Petitioner’s proposal. After institution, Patent Owner asserted a slightly different definition of a POSITA, namely someone who “would have possessed at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” Resp. 17. Relevant graduate education could substitute for the professional work experience. Id. Upon review of the full record, we see no reason to modify, and we thus maintain, the definition of a POSITA applied in our Decision on Institution. We also determine that our decision would be the same under either of the parties’ proposed definitions.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “During the proceeding, the parties also dispute the proper construction of “etching away the doped GaN layer, except a portion of the doped GaN layer beneath the gate contact” as recited in step [1e4] and provided briefing on this issue. Papers 35, 36, 37, 38. Because, as explained below, our determination rests upon Petitioner’s failure to show a sufficient reason to modify the asserted art, which is not dependent upon any particular claim construction, we need not, and do not, address these claim construction issues. 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)) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 13

  • ExcludeDenied

    “III. PETITIONER’S MOTION TO EXCLUDE EXHIBIT 2008 Petitioner filed a Motion to Exclude (Paper 25, “Mot.”) Exhibit 2008, which is a hearing transcript from the parallel ITC investigation. Mot. 1. Because we do not rely upon Exhibit 2008 in our Decision, we dismiss Petitioner’s motion as moot.” slip op. at 47

  Patent outcomesUS 8,404,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,404,508
• Intel Corporation v. Besang Inc.No claims unpatentable
  PTAB · Dec 11, 2024 · IPR2023-00991 · APJ Jon B Tornquist · IPR · Final written decision

  The Board held claims 1 and 13–17 not unpatentable, finding the asserted obviousness grounds deficient in claim limitations or motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties proposed definitions differ in that Petitioner would permit a degree in “materials science” and require three years, as opposed to two years, of relevant experience. Compare Pet. 9 with PO Resp. 14. On this record, we adopt Patent Owner’s proposed definition, as it is more consistent with the prior art of record and the disclosures of the ’702 patent. We note, however, that neither party contends that the outcome of this case depends on the slight differences in the proposed definitions of a person of ordinary skill in the art.” slip op. at 9

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

    “1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate. Pet. 11–12. 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” having a plurality of vertically oriented semiconductor memory cells; that plurality is bonded to the dielectric layer. Ex. 1001, 12:29–32. A construction that gives meaning to all words of the claim is preferred. Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, we do not understand a “stackable add-on layer” to include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. Pet. 16, 29 n.11, 51 (“In Lee, each level 3104 is deposited on the underlying level of array 3101.”). Therefore, Petitioner has not shown that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Analysis: Claims 14–17 Claims 14–17 each depend, directly or indirectly, from claim 13. Petitioner’s arguments with respect to these claims do not remedy the deficiencies noted above with respect to claim 13. Pet. 31–41. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14–17 would have been obvious over Lee.” slip op. at 19

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

    “We agree with Patent Owner that Petitioner has not demonstrated that Aspar would improve Lee, would solve a problem in Lee, and that Petitioner is proposing to use Aspar in a way that is not disclosed in the reference. PO Resp. 49–50 (citing Ex. 2029 ¶¶ 153–162); Tr. 57:24–58:12; Pet. 61; KSR, 550 U.S. at 417 (asking whether a technique “would improve similar devices in the same way”), 420 (asking whether there was a known problem in the art), 421 (asking whether one of ordinary skill in the art had reason to “pursue the known options”); Intel, 61 F.4th at 1381 (explaining that obviousness may be demonstrated by showing that there was a known problem in the art (“cache coherency in multiprocessor systems”) and that a person of ordinary skill in the art would recognize that that the prior art solution to this problem (“global segmented secondary cache”) would improve the system of another prior art reference). Petitioner does not persuasively show that there was any known problem in the art with respect to Lee or its monolithic method of constructing memory arrays. Nor does Petitioner provide persuasive argument or evidence that Aspar’s wafer bonding would improve Lee’s memory device.10 For example, Petitioner states in a conclusory fashion that Aspar would address the known problem of “fabricating 3D structures,” but does not explain what those problems were or why Lee fails to solve them. Pet. 61. Dr. Sechen’s testimony merely parrots the Petition, providing no further analysis or explanation of what problem might exist in Lee when fabricating its 3D structures. Ex. 1003 ¶ 212. The Petition notes that Aspar transfers “thin layers of very good thickness homogeneity and with a high crystalline quality,” but the Petition never asserts that Lee’s direct deposition method fails to provide these same or similar qualities. Pet. 60–61.” slip op. at 27

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Besang Inc.No claims unpatentable
  PTAB · Nov 13, 2024 · IPR2023-00900 · APJ Jon B Tornquist · IPR · Final written decision

  Claims 13–17 were not shown unpatentable: Lee-based grounds fail on the stackable add-on layer limitation, and Watanabe-based grounds fail on nonvolatile memory, enablement, or motivation to combine.

  RulingsFinal written decision

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

    “meaning in the art. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (stating that, absent an accepted meaning in the art, “we construe a claim term only as broadly as provided for by the patent itself”). Thus, we must attempt to discern the meaning of this term from the claim language itself and from the remainder of the intrinsic record. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”). Upon review of the parties’ arguments and the intrinsic record, we agree with Petitioner that the ’702 patent does not support a construction of “stackable add-on layer” that encompasses memory cells formed by sequential deposition on a substrate without being formed and then added to a separately formed substrate.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, we construe “stackable add-on layer” to not include memory cells that are formed by sequential deposition on or above a substrate without being added to a separately formed substrate. It is undisputed, and indeed it is Petitioner’s assertion, that Lee’s memory devices are formed by sequential deposition. See Pet. 52 (asserting that in Lee “the layers of the array are directly deposited on the layers of each underlying level, and the array is deposited on the interlayer insulating layer formed over a substrate”); see also id. at 70 (“Lee discloses forming vertical memory devices through layer-by-layer sequential deposition on the substrate . . . .”). Therefore, Petitioner does not show that Lee discloses every limitation of independent claim 13 under our claim construction. Thus, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious in view of Lee. 3. Claims 14 and 15 Claims 14 and 15 depend from claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments for these claims do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 54–59. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 14 and 15 would have been obvious in view of Lee alone. E. Claims 16 and 17 over Lee and Endoh Petitioner contends the subject matter of claims 16 and 17 would have been obvious over the combined disclosures of Lee and Endoh. Pet. 59–69. Petitioner’s arguments with respect to these claims, however, do not remedy the deficiencies noted above with respect to Lee and its monolithic, sequentially deposited memory array. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claims 16 and 17 would have been obvious over Lee and Endoh.” slip op. at 18

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

    “combined Lee and Watanabe to achieve improved integration density. Pet. 71. Petitioner concedes, however, that the benefits of Lee’s design related to 3-D integration and improved integration density would be obtained if Lee’s memory structures are formed using either Lee’s monolithic construction method or Watanabe’s alternative stacking method. Pet. Reply 13–14 (citing Ex. 1041 ¶ 34). Thus, we are not persuaded that improved integration density provides a sufficient rationale for Petitioner’s combination of Lee’s memory device and Watanabe’s stacking method. Petitioner argues that Watanabe’s stacking method “improves the accuracy of the wiring” because the wiring is made “for each planar member.” Pet. 72 (citing Ex. 1005, 6:1–3). Watanabe also states that its disclosed methods provide “a low interconnection wire resistance.” Ex. 1005, 6:20–23. Petitioner does not, however, explain sufficiently how Watanabe’s stacking method would improve Lee’s device. For example, Petitioner does not address whether the alleged wiring benefit already existed in Lee’s monolithic array or explain how this benefit would also apply to Lee’s particular memory array, which differs in construction and elements from Watanabe’s device. This diminishes Petitioner’s benefits-based motivation to combine arguments. In general, a petitioner need not demonstrate that a particular alternate method would improve a prior art device in order to show a motivation to combine. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023); see Pet. Reply 20 (citing Intel). But here, Petitioner affirmatively invokes improvement of Lee’s device as a reason for the combination, and we must evaluate Petitioner’s contention. Moreover, any relative lack of improvement or benefits must be weighed against any problems the alternative method would introduce. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795–96 (Fed. Cir. 2021) (noting that simultaneous advantages and disadvantages to a proposed combination must be analyzed to determine whether the disadvantages “outweighed any reason to combine”). Here, as discussed above in more detail with respect to the ground based on Watanabe, the evidence shows that one of ordinary skill in the art would have expected Watanabe’s bonding temperature of 900– 1000° C to damage the electronic devices in an underlying substrate. Ex. 2029 ¶¶ 75–76; Ex. 2028, 123:13–124:7; Ex. 2027, 715. The expected damage to Lee’s device, when balanced against the limited evidence of a benefit to the combination,7 outweighs the reason to combine Lee and Watanabe set forth in the Petition. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that claim 13 would have been obvious over Lee and Watanabe. 2. Analysis – Claims 14 and 15 Claims 14 and 15 both depend directly from independent claim 13. Ex. 1001, 12:35–42. Petitioner’s arguments with respect to claims 14 and 15 do not remedy the deficiencies noted above with respect to independent claim 13. Pet. 73. Accordingly, Petitioner does not demonstrate by a preponderance of the evidence that these claims would have been obvious over Lee and Watanabe.” slip op. at 40

  • Expert testimonyPatent owner expert creditedOther

    “We credit the testimony of Dr. Przybylski that one of ordinary skill in the art would have understood that Watanabe’s stacked structure would be severely impacted if bonded at a temperature above 900° C, as disclosed in Watanabe. Ex. 2029 ¶¶ 76–77. Dr. Przybylski’s opinion is supported by Dr. Lee’s testimony (Ex. 2028, 123:13–124:7, 125:6–126:7), as well as Watanabe (Ex. 1005, 6:6–14) and Batude (Ex. 2027, 715). As further discussed below, we find that Petitioner has not rebutted Patent Owner’s showing of nonenablement, and Patent Owner has carried its burden to demonstrate that Watanabe was not enabled for bonding temperatures of 900–1000° C, as of the 2004 filing date of the ’702 patent.” slip op. at 32

  Patent outcomesUS 7,378,702 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,378,702
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00094 · APJ Neil T Powell · IPR · Final written decision

  Petitioner failed to prove claims 1–22 and 24–40 unpatentable; the obviousness grounds fail to show the claimed communication-link initiation and location information in a bet message.

  RulingsFinal written decision

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

    “The ՚266 patent only uses the terms “initiates” and “initiate” in the Abstract and the claims. The Abstract discloses that “the computer initiates a communication link with, and transmits the notification message to,” a communication device. Ex. 1001, code (57). In describing the methods depicted in Figures 9 and 10, the ՚266 patent provides that after detecting a posting for which the user would like to be notified, in step 904 gaming facility computer 30 generates a user notification message and transmits that message to user communication device 20, in real-time or otherwise, as a pager, beeper, pre-recorded, instant, facsimile, and/or email message and/or a telephone call. Ex. 1001, 57:29–35, 58:62–59:15. A general dictionary definition of “initiate” is “to cause or facilitate the beginning of: set going.” Merriam-Webster On-line Dictionary, available at https://www.merriam-webster.com/dictionary/initiate (last visited April 3, 2024). Thus, after evaluating the Parties’ claim construction arguments regarding the term, we agree with Patent Owner and construe the term causing or facilitating the beginning of a communication link.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art would have had “a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 43–44). Patent Owner, as noted above, did not file a Preliminary Response in this proceeding and, therefore, has not contested Petitioner’s proposed definition. For purposes of this Decision, we find that the ’266 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’266 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Although Mr. Kitchen testified that it was old and well known as the time of the ՚266 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 139. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in an interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 28

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

    “Although Mr. Kitchen testified that it was old and well known as the time of the ՚266 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 139. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in an interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 28

  Patent outcomesUS 10,147,266 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,147,266
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00093 · APJ Neil T Powell · IPR · Final written decision

  The Board held claims 1–20 not unpatentable because Petitioner did not show that the asserted combinations rendered the claims obvious, including the required location information in a bet message.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶ 45). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’341 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’341 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 12–13.” slip op. at 14

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

    “37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The Parties construe certain claim language. Pet. 5–7; PO Resp. 14–18; Pet. Reply 1–5. In this proceeding, resolving the Parties’ patentability dispute does not require construing any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15

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

    “Petitioner contends it would have been obvious to include McNutt’s location data “with” Garahi’s bet message, i.e., wagering data comprising the type and desired amount of wager. Pet. 30. However, Petitioner has not explained why a skilled artisan would modify Garahi’s bet message to include the location data of McNutt. Petitioner contends that a skilled artisan would do so “to be able to discern the legality of a placed bet as McNutt discloses if a user of Garahi’s system moves to a wager-prohibitive location, e.g., the state of Oklahoma.” Pet. Reply 14 (citing Pet. 29–30; Ex. 1003 ¶¶ 154–156; Ex. 1005 ¶¶ 111, 114). We agree with Patent Owner that Petitioner fails to persuasively identify any “deficiency in Garahi which McNutt purportedly solves, inasmuch as Garahi already discloses obtaining” and using the location of the user to discern the legality of a placed bet at the user’s location. PO Resp. 40; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to add location information into Garahi’s bet message having wagering data. Further, Petitioner has not shown a reason outside of hindsight. The ՚341 patent specifically provides that transmitting “information regarding the position or location of the first device or second device” is for “determin[ing] if the bet is allowed or disallowed using position or location information of the first device or the second device.” Ex. 1001 code (57); see also id. at 6:59–66, 16:22–31, 80:10–81:4, Fig. 20A (discussing process for determining whether the bet is allowed based on the user’s location). To the extent that Garahi teaches transmitting a message with wagering data, and McNutt teaches location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by claim 1. Thus, the preponderance of evidence does not show that the prior art would have made it obvious to have the bet message comprise the location information.” slip op. at 30

  Patent outcomesUS 10,043,341 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,043,341
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00092 · APJ James A Tartal · IPR · Final written decision

  Claims 1–14 and 16–20 were not shown unpatentable because the asserted obviousness combinations did not establish the claimed location information in a bet message or a sufficient reason to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends that a person of ordinary skill in the art would have had “a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 5 (citing Ex. 1003 ¶¶ 43–44). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’920 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’920 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 10–11.” slip op. at 14

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

    “We find no claim term requires express construction, because, for the reasons provided below, resolving the Parties’ patentability dispute in this case does not require construing any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “information of the user telephone equipment to verify that the user is located in a geographic area where wagering is legal,” but Petitioner acknowledges that “Garahi does not specify exactly how or when this verification [that the user is located in a geographic area where wagering is legal] occurs or whether the location information is transmitted to the TPSMS with the wagering data.” Id. at 40. Notwithstanding Petitioner’s suggestion that there is ambiguity as to whether Garahi may include position or location information in its “wagering data,” the evidence advanced by Petitioner is unequivocal on this point. When asked whether Garahi, alone, discloses a bet message that contains position or location information, Mr. Kitchen testified on behalf of Petitioner that “Garahi certainly doesn’t.” Ex. 2001, 140:19–141:8; see also Pet. Reply 18 (stating that Mr. Kitchen testified “only that ‘Garahi certainly doesn’t’ disclose the transmission of location information with a bet”) (citing Ex. 2001, 139:12–141:5); Ex. 2001, 124:3–7 (Mr. Kitchen confirming that Garahi does not disclose everything in “element 1(c)(iii)”). Petitioner, accordingly, relies on McNutt, in combination with Garahi, and asserts that “it would have been obvious” to a person of ordinary skill in the art to have configured “Garahi to include the user communication device’s location information in the wagering data (i.e., the bet message) as provides no persuasive evidence that McNutt teaches including “location information” in “wagering data” that corresponds to a “bet message.” To the contrary, Mr. Kitchen testified that “McNutt does not disclose a bet message,” and therefore, does not, alone, teach including location information in the wagering data as a part of a bet message. Instead, as Mr. Kitchen explains, Petitioner’s argument is premised on combining “location which is obtained by McNutt at the institution of the bet” with the wagering data transmitted by Garahi. See Ex. 2001, 136:8–24.” slip op. at 33

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

    “combination in regard to the bet message limitation, and we recognize that asserted prior art must not be considered in isolation, but for all that it teaches in the asserted combination, missing from Petitioner’s contentions is any persuasive evidence that a person of ordinary skill in the art would have had reason to include position or location information based on McNutt in the wagering data of Garahi that Petitioner contends corresponds to a “bet message.” There is no persuasive evidence that the mere fact that McNutt teaches that location information may be obtained “when the user initiates the wager” would have been understood by a person of ordinary skill in the art to have taught or suggested including that location information with the wagering data of Garahi in a single “bet message,” as required by the Challenged Claims. To the contrary both Garahi and McNutt describe systems that first determine whether a bet may be placed from a location before allowing a user to transmit wagering data corresponding to “information regarding a bet to be place.” See, e.g., Ex. 1004 ¶ 50; Ex. 1006 ¶ 111, Fig. 12; Ex. 2001, 135:3–25, 137:11–22 (Mr. Kitchen testifying that in McNutt, the location information is obtained at the creation of the bet, i.e., when the user initiates the wager creation process, and allows or prevents access to the gambling apparatus). Petitioner contends that a skilled artisan would have done so to have been able to “discern the legality of a placed bet as McNutt discloses if a user of Garahi’s system moves to a wager-prohibitive location.” Pet. Reply 17 (citing Pet. 40–41; Ex. 1003 ¶¶ 173, 175, 176; Ex. 1006 ¶¶ 111, persuasively identify any “deficiency in Garahi which McNutt purportedly solves, inasmuch as Garahi already discloses obtaining location information” and using that information to discern the legality of a placed bet at the user’s location. PO Resp. 44; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to be obtained by adding location information into Garahi’s bet message having wagering data. Petitioner has not shown a sufficient reason supported by a preponderance of the evidence to modify Garahi based on the teachings of McNutt, outside of hindsight based on the disclosures of the ’920 patent, which, itself, explains that a determination of whether a bet is allowed or disallowed is based on the position or location of the user communication device having been transmitted as part of a bet message with information regarding a bet to be placed. See, e.g., Ex. 1001, 59:16–47, 94:53–95:5. In sum, we find that a preponderance of the evidence fails to show that Garahi and McNutt, in combination with Stadelmann, teaches or suggests including position or location information in a bet message, as required by the Challenged Claims. To the extent that Garahi teaches transmitting a message with wagering data, and McNutt teaches that location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by the Challenged Claims.” slip op. at 41

  Patent outcomesUS 9,965,920 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,965,920
• Entain Corporate Services Ltd. / Betmgm, LLC et al. v. Beteiro, LLCNo claims unpatentable
  PTAB · May 6, 2024 · IPR2023-00095 · APJ Amee A Shah · IPR · Final written decision

  Claims 1–13 and 16–20 were not shown unpatentable because Petitioner did not establish the asserted obviousness combinations or adequate reasons to combine.

  RulingsFinal written decision

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

    “Patent Owner asserts that “the phrase ‘initiates a communication link’ should be given its plain and ordinary meaning, which includes a construction of ‘initiates’ to mean simply: ‘to cause a process or action to begin.’” PO Resp. 13. Patent Owner disagrees with the construction provided by Petitioner “which would suggest ‘initiates a communication link’ is satisfied by the mere joining of a communication network.” Id. (citing Ex. 2001, 115:15–23).” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention (“POSITA,” “PHOSITA,” or “skilled artisan”) “would be a person having a Bachelor of Science Degree in Electrical Engineering or Computer Engineering or equivalent, and at least two years of experience in the design and development of video game-related hardware and software.” Pet. 4 (citing Ex. 1003 ¶¶ 45–46). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. See PO Resp. We find that the ’755 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’755 patent is consistent with the level of skill proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s proposed definition for a person of ordinary skill in the art, which is consistent with the definition we adopted in our Decision to Institute. See Inst. Dec. 15.” slip op. at 17

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

    “To the extent Petitioner argues it would have been obvious to modify Garahi’s system to initiate a communication link (Pet. 19–20; Pet. Reply 9), Petitioner does not provide adequate evidence or reasoning to establish how or why a skilled artisan would have modified Garahi’s system to initiate a communication link and transmit the message to the user’s device. Although Mr. Kitchen testified that it was old and well known at the time of the ՚755 patent to initiate a communication link and that there would have been a reasonable expectation of success to configure Garahi’s system to do so, Mr. Kitchen does not explain why one of ordinary skill in the art would have been motivated to or would have benefited from such a modification of Garahi’s system. Mr. Kitchen testifies that “[h]aving the TPSMS establish the communication link would have been obvious because doing so would allow the sending of wagering information to a user.” Ex. 1003 ¶ 127. Yet, Garahi’s system already allows for the sending of wagering information to the user in posting the generated notification message to a “Message Board.” Ex. 1004 ¶¶ 89, 107, 110. The existence of a new message is indicated by a display icon 318 next to the option “Message Board” in interface 300 having multiple options. Ex. 1004 ¶¶ 89, 107, 110, Figs. 3, 12, 13. In order to receive the message, the user must first access the Message Board by selecting the related option, after which the information is displayed to the user. Id. That it was well-known in the art to have initiated a communication link does not explain how or why a skilled artisan would have modified Garahi’s system that notifies a user of wagering information by posting on a message board to notify a user by initiating a communication link to the user. Simply because a skilled artisan could have modified Garahi’s system to incorporate initiating the communication link does not explain why they would have had reason to do so. See In re NuVasive, 842 F.3d at 1382; Belden, 805 F.3d at 1073. Thus, the preponderance of evidence does not show that Garahi’s posting or transmitting race information to the user’s Message Board, alone or in combination with the well-known technique of initiating a communication link, would have made it obvious to have the claimed computer initiate a communication link with a first communication device in response to generating the notification message.” slip op. at 42

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner fails to persuasively identify any “deficiency in Garahi which McNutt purportedly solves in as much as Garahi already discloses obtaining” and using the location of the user to discern the legality of a placed bet at the user’s location. PO Resp. 33; Ex. 1004 ¶ 50. Petitioner has not provided any further benefit to add location information into Garahi’s bet message having wagering data. Further, Petitioner has not shown a sufficient reason supported by a preponderance of the evidence to modify Garahi based on the teachings of McNutt outside of hindsight based on the disclosure of the ՚755 patent. The ՚755 patent specifically provides that transmitting “information regarding the position or location of the first communication device or second communication device” is for “determining whether the bet is allowed or disallowed using the position or location information.” Ex. 1001 code (57); see also id. at 7:8–15, 80:24–81–18, Fig. 20A (discussing a process for determining whether the bet is allowed based on the user’s location). To the extent that Garahi teaches transmitting a message with wagering data, and that McNutt teaches location information may be obtained “when the user initiates the wager,” Petitioner has shown no persuasive reason why a person of ordinary skill in the art would have had reason to include the location information of McNutt with the wagering data of Garahi in a single bet message, as required by the Challenged Claims. 2. Conclusion for Alleged Obviousness over Garahi and McNutt Based on our review and consideration of Petitioner’s arguments and evidence, we find that based on the record, Petitioner has not established by a preponderance of the evidence that the asserted combination of Garahi and McNutt teaches every limitation of claims 1, 2, and 18 and why one of ordinary skill in the art would have had sufficient reason to combine Garahi and McNutt, with a reasonable expectation of success in doing so.” slip op. at 48

  Patent outcomesUS 10,255,755 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,255,755
• SNF S.A. v. Chevron U.S.A., Inc.No claims unpatentable
  PTAB · Apr 18, 2024 · IPR2022-01534 · APJ Barry L Grossman · IPR · Final written decision

  Claims 1–25 were not shown unpatentable on any asserted ground because the evidence failed to establish the claimed filter ratio or support the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In our Decision to Institute this proceeding, we adopted Dr. Barati’s proposed level of skill based on the prior art, the sophistication of the technology disclosed in the ’320 patent, and Dr. Barati’s opinion testimony. Dec. Inst. 17 (“we adopt Dr. Barati’s definition of the level of ordinary skill”). Patent Owner states it “does not dispute the level of skill applied by the Board in its institution decision.” PO Resp. 7. Accordingly, in this Decision, based on the evidence and the arguments of the parties, we maintain and adopt the level of ordinary skill stated in the Decision to Institute. In this proceeding, a person of ordinary skill would have had a Ph.D. in Chemical or Petroleum Engineering (or related science or engineering discipline) with 2-3 years of experience in the design and implementation of methods for hydrocarbon recovery including use of polymer compositions in such recovery methods. Alternatively, a person of ordinary skill might substitute several years of actual design or implementation experience for the advanced degree. See Ex. 1012 ¶ 18.” slip op. at 16

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

    “Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (citations omitted)). We determine that a specific construction of the claims is not necessary to reach a decision in this inter partes review of the challenged claims.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the 17 Again, to avoid confusion, this citation format is to page 15 of Exhibit C, which is an attachment to Exhibit 1012 in this proceeding. questioned function, it seems to be well settled that the disclosure should be regarded as sufficient. Id. at 1260 (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner fails to provide any persuasive evidence or argument that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li. As discussed above, anticipation and obviousness are different grounds, requiring different analyses, and different evidence. Petitioner fails to establish what modifications in Li would have been obvious and why it would have been obvious to make the modifications with a reasonable expectation of success. The word “obvious” appears in Ground 1 only in the analysis of claim 24, clause D, on page 37 of the Petition, where Petitioner merely states the conclusion that this clause “would be obvious” [sic, the statute requires a temporal component to establish the claim “would have been obvious”]. Accordingly, we determine that Petitioner fails to provide the requisite evidence and arguments that claims 1, 2, 13–15, and 20–25 would have been obvious in view of Li.” slip op. at 28

  Patent outcomesUS 10,626,320 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,626,320

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.