• Emnos USA Corp. v. Dunnhumby LimitedInstitution denied
  PTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution

  The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2

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

    “remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,214,246
• NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution denied
  PTAB · Dec 9, 2015 · IPR2015-01316 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show that VESA P&D and VESA Flat Panel were publicly accessible printed publications, so claims 6–10 could not rely on them.

  RulingsInstitution decision

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

    “partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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). Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 6–10 of the ’724 patent. Accordingly, we do not institute an inter partes review of any claim.” slip op. at 2

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

    “We find Patent Owner’s arguments persuasive. Petitioner does not explain adequately whether or how the VESA documents were made “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. Instead, Petitioner merely asserts that “VESA is a well-known standards setting organization that promulgates standards relating to video in electronics.” Pet. 14 (citing Ex. 1003 ¶ 58); id. at 22 (citing Ex. 1003 ¶ 75). As such, we determine that Petitioner has not made a sufficient showing that the VESA documents are printed publications under § 102(b). See Lister, 583 F.3d at 1317 (burden is on the proponent to show the purported reference was publicly available). Therefore, based on the record before us, we conclude Petitioner has not made a sufficient showing that either VESA P&D or VESA Flat Panel may be relied upon as prior art with respect to claims 6–10 of the ’724 patent.” slip op. at 6

  § 102 anticipationcites Phillips
  Patents in suitUS 6,804,724
• NVIDIA Corp. v. Samsung Electronics Co., Ltd.Institution denied
  PTAB · Dec 9, 2015 · IPR2015-01315 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution because Petitioner did not show that Lai qualified as prior art, defeating both asserted grounds for claims 1, 3, and 26–29.

  RulingsInstitution decision

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

    “partes review may not be instituted unless “the information presented in the petition . . . and any [preliminary] 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).” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Lai issued from U.S. Patent Application No. 10/236,794, which was filed on September 6, 2002 and claims the benefit of U.S. Provisional Application No. 60/328,284, filed on October 9, 2001 (Ex. 1004, “the Lai Provisional”). Ex. 1003, [21], [22], [60], 1:8–12. Because Lai’s filing date postdates the effective filing date of the ’602 patent, Lai must be entitled to the benefit of the Lai Provisional filing date to qualify as prior art under 35 U.S.C. § 102(e). Lai is entitled to the benefit of the Lai Provisional filing date if the disclosure of the Lai Provisional supports the claimed subject matter of Lai in accordance with 35 U.S.C. § 112, ¶ 1.1 See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”).” slip op. at 5

  • Strike new argumentNew argument disregardedOther

    “In a conference call with the parties, the panel authorized Petitioner to submit a five-page, non-argumentative claim chart showing how the claims of a reference patent asserted by Petitioner are supported by a provisional application. Paper 9, 3. The panel also authorized Patent Owner to file a five-page response to Petitioner’s claim chart. Id. at 4. Petitioner filed a claim chart. Paper 8. Paper 8 included two pages of text in addition to the five-page claim chart. Because these two additional pages are not in compliance with our Order (see Paper 9), we have considered the claim chart only and none of the arguments presented in the additional two pages. Patent Owner subsequently filed a response to Petitioner’s claim chart. Paper 10.” slip op. at 2

  § 102 anticipationcites Phillips
  Patents in suitUS 6,819,602
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00828 · APJ Joni Y Chang · IPR · Final written decision

  Claims 30–37, 39, and 40 are unpatentable under § 103(a) over Iwamura, Angelbeck, and Pinsley, with Wells or Lovelock added for specified dependent claims.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1223, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1201, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1223, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Skill levelOther

    “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.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding that Dr. Hartsough provides a definition of “a person of ordinary skill in the 10 art” in the context of the ’779 patent,5 we are mindful that the level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Based on the evidence in this record, we credit Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) that magnets, such as those disclosed in Pinsley and Angelbeck, generate a magnetic field that substantially traps electrons in a plasma apparatus. Notably, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generate a magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Dr. Hartsough acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Both Dr. Kortshagen’s testimony (Ex. 1221 ¶¶ 39–46, 58–59) and Dr. Hartsough’s cross-examination testimony (Ex. 1223, 123:4–13) are consistent with the prior art of record, including the Admitted Prior Art, which recognizes a magnetic field is strongest at the poles of the magnet and weakest in the region at the center between the poles (Ex. 1201, 3:12–13). As discussed above, the prior art of record clearly shows that it was well-known in the art at the time of the invention to use magnets in a plasma apparatus for trapping electrons. Based on the prior art of record, we agree with Dr. Kortshagen that “the use of magnets and their corresponding magnetic fields to trap electrons . . . was already known in the prior art,” at the time of the invention. See Ex. 1221 ¶ 37.” slip op. at 24

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

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 47–49, 52, 54–55. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1205, 2:43–48; Ex. 1206, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1223, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1201, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground 30 state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1202 ¶¶ 120, 140–41. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. X-ray radiation” slip op. at 30

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00917 · APJ Joni Y Chang · IPR · Final written decision

  Claims 7, 9, 20, 21, 38, and 44 are unpatentable under § 103(a) over the specified combinations of Iwamura, Angelbeck, and Pinsley with Gruber or Wells.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In that regard, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; Translogic, 504 F.3d at 1262. We also recognize that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)); Translogic, 504 F.3d at 1259–1262. Notwithstanding 10 that Dr. Hartsough provides a definition of “a person of ordinary skill in the art” in the context of the ’779 patent,6 we are mindful that the level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1419, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1401, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1419, 42:9–43:17. 9 Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Here, GlobalFoundries relies upon Angelbeck and Pinsley to show that generating a magnetic field to trap electrons in a plasma apparatus was well-known in the art at the time of the invention. Pet. 44–47. Indeed, both Angelbeck and Pinsley teach the use of a magnet to generate a magnetic field for increasing the efficiency of exciting atoms in a plasma apparatus. Ex. 1405, 2:43–48; Ex. 1406, 1:36–41. Zond’s expert, Dr. Hartsough, also acknowledges that, since the mid-1970s, using magnets for trapping electrons in magnetron sputtering systems was well-known in the art. Ex. 1419, 20:13–21:1. Moreover, the Admitted Prior Art (Figure 1 of the ’779 patent) discloses a plasma sputtering apparatus, having magnets that generates magnetic field to trap electrons. Ex. 1401, 3:9–18 (“The magnetic field 132 is shaped to trap and concentrate secondary electrons proximate to the target surface.”). Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1402 ¶ 139. We credit Dr. Kortshagen’s testimony, as it is 34 consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Trapping electrons and ions” slip op. at 34

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Fujitsu Semiconductor Limited / Fujitsu Semiconductor America, Inc. et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-00829 · APJ Joni Y Chang · IPR · Final written decision

  Claims 16, 28, 41, 42, and 45 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley; claim 46 is unpatentable as anticipated by Iwamura.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “(ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1317, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma includes excited atoms and metastable atoms. Ex. 1301, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1317, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “In its Petition, GlobalFoundries identifies four claim elements recited in claims 41 and 42 as means-plus-function elements, invoking 35 U.S.C. § 112, ¶ 6, but Zond did not proffer any claim constructions as to these claim elements prior to institution of this inter partes review.6 Pet. 17–19; Prelim. 6 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112-29, 125 Stat. 284, 296 (2011). Because the ’779 9 Resp. 18–19. We agree with GlobalFoundries that these claim elements are written in means-plus-function form and fall under § 112 ¶ 6, because: (1) each claim element uses the term “means for”; (2) the term “means for” in each claim element is modified by functional language; and (3) the term “means for” is not modified by any structure recited in the claim to perform the claimed function. See Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998) (using the term “means for” in a claim creates a rebuttable presumption that the drafter intended to invoke § 112, ¶ 6); Sage Prods. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (the presumption is not rebutted if the term “means for” is modified by functional language and is not modified by any structure recited in the claim to perform the claimed function); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (confirming that “use of the word ‘means’ creates a presumption that § 112, ¶ 6, applies” (citing Personalized Media, 161 F.3d at 703)).” slip op. at 9

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

    “Zond’s argument and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized, containing no excited or metastable atom, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s 17 disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1307, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.” (emphasis added)). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1317, 42:9–43:17, 74:2–76:4; Ex. 1315 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited or metastable atoms also is inconsistent with the ordinary and customary” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 48; Ex. 1304, 30, 34; Ex. 1302 ¶ 138. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1305, 2:31–36; Ex. 1306, 2:45–56; Ex. 1301, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both 40 Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1305, 2:43–48, Ex. 1306, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting atoms for generating a plasma.” slip op. at 40

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01073 · APJ Joni Y Chang · IPR · Final written decision

  Claims 1–4, 10–15, 17, 18, 24–27, and 29 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Ex. 1017, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1001, 1:7–8; 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1017, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

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

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1002 ¶ 129. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predictable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is 35 beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley. Conclusion” slip op. at 35

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

    “Zond’s argument and expert testimony, however, improperly rest on the notion that all of the electrons, in Angelbeck, are lost to the wall. On the contrary, Angelbeck specifically indicates that “[t]he current-excited discharge passed through the gas within tube 10 creates a plasma in which the atoms are ionized and the electrons are freed.” Ex. 1006, 2:54–56 (emphasis added). More importantly, as discussed above, Angelbeck teaches that a magnetic field creates a high density of excited atoms and increases the efficiency of excitation. Id. at 1:36–41, 2:18–20, 2:29–33. Given the evidence before us, we do not discern that Angelbeck criticizes, discredits, or otherwise discourages investigation into using magnetic field to substantially trap electrons. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (“Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure of non-preferred embodiments.”). Therefore, a person of ordinary skill would not have been dissuaded from combining Iwamura with Angelbeck and Pinsley.” slip op. at 33

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by Kudryavtsev. Pet. 50; Ex. 1004, 30, 34; Ex. 1002 ¶ 130. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1005, 2:31–36; Ex. 1006, 2:45–56; Ex. 1001, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1005, 2:43–48, Ex. 1006, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 32

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Globalfoundries U.S., Inc. / Globalfoundries Dresden Module One LLC & Co. KG et al. v. Zond, LLCAll claims unpatentable
  PTAB · Nov 3, 2015 · IPR2014-01076 · APJ Joni Y Chang · IPR · Final written decision

  Claims 43 is unpatentable as anticipated by Iwamura; claims 5, 6, 8, 19, 22, and 23 are unpatentable as obvious over Iwamura, Angelbeck, and Pinsley.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “Zond’s expert, Dr. Larry D. Hartsough, also testifies that, in the context of the ’779 patent, one with ordinary skill in the art at the time of the invention would have understood that a plasma includes charged particles (ions and electrons), as well as neutral atoms—namely, ground state atoms, excited atoms, and metastable atoms—because not every atom is ionized. Ex. 1117, 42:9–43:17. We observe that the ’779 patent uses the term “plasma” in accordance with its ordinary and customary meaning as would be understood by one with ordinary skill in the art. For instance, the Specification of the ’779 patent states that “[a] plasma is a collection of charged particles that move in random directions,” and further explains that a plasma also includes excited and metastable atoms. Ex. 1101, 1:7–8, 8:43–48. We are cognizant that, in an ideal situation, a plasma can be fully ionized, which contains only charged particles (ions and electrons). Ex. 1117, 42:9–43:17. Based on the evidence before us, we construe the claim term “plasma” as “a collection of ions, electrons, ground state atoms, excited atoms, and 9 metastable atoms,” consistent with the term’s ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the Specification of the ’779 patent.” slip op. at 9

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

    “Zond’s arguments and Dr. Hartsough’s testimony, however, are predicated on the premise that the gas is fully ionized containing no excited or metastable atoms, before reaching Iwamura’s second plasma generation unit inside the chamber. That premise squarely contradicts Iwamura’s disclosure. Notably, Iwamura explicitly discloses that “the first plasma generation unit preactivates the gas and the second plasma generation unit activates the gas and forms activated gas species.” Ex. 1107, 2:61–65 (emphasis added). Iwamura also describes “preactivation” to mean that “the gas is not yet fully ionized, but its excitation level is high.” Id. at 2:34–39 (“[T]he gas reaching the downstream plasma generation position maintains the ionized or near-ionized state, formed by preactivation, i.e., the gas is not yet fully ionized, but its excitation level is high, due to the upstream plasma preactivation.”) (emphasis added). Moreover, if the gas were fully ionized before reaching Iwamura’s second plasma generation unit, as Zond alleges, there would be no reason to 15 have a second plasma generation unit, much less having a second plasma generation unit to generate a plasma inside the chamber. On the contrary, Iwamura explicitly states that “a second plasma generation unit [is] for activating the gas to generate a plasma downstream along the flow path of the gas.” Id. at 2:59–61 (emphasis added). Iwamura further discloses that the gas is activated by the second plasma generation unit—increasing the density and excitation levels of activated gas species and generating a plasma—to improve uniformity and treatment rate. Id. at 8:4–46, Fig. 1. In fact, Dr. Hartsough in his cross-examination testimony acknowledges, and Dr. Kortshagen confirms, that the gas reaching Iwamura’s second plasma generation unit includes excited and metastable atoms. Ex. 1117, 42:9–43:17, 74:2–76:4; Ex. 1115 ¶¶ 25–33, 89. Zond’s contention that a plasma does not include a volume of excited atoms also is inconsistent with the ordinary and customary meaning of the term “plasma”—namely, “a collection of ions, electrons, ground state atoms, excited atoms, and metastable atoms.” As discussed above, both Dr. Kortshagen and Dr. Hartsough agree with that definition. Ex. 1102 ¶¶ 22–28; Ex. 1117, 42:9–43:17. Furthermore, the Specification of the ’779 patent discloses that a plasma includes charged particles as well as neutral excited and metastable atoms. Ex. 1101, 8:43–48. More importantly, as the Specification explains, a volume of excited or metastable atoms is generated when “a discharge is created in a discharge region” between a pair of electrodes, similar to Iwamura’s first plasma generation unit, energizing and ionizing a portion of ground state atoms. Id. at 14:4–14:23 (“Some of the ground state atoms 208 are directly ionized, which releases ions 424 and 16 electrons 426 into the stream of metastable atoms 218. . . . The metastable atoms 218, the free ions 424 and electrons 426 then pass through the output 423 of the metastable atom source 402.”) (emphasis added). Therefore, even in the embodiment in which Iwamura’s first generation unit generates a plasma, one with ordinary skill in the art would have recognized that the plasma reaching Iwamura’s second generation unit includes a volume of excited and metastable atoms. Given the evidence in this record, we determine that GlobalFoundries has demonstrated, by a preponderance of the evidence, that Iwamura discloses an energy source that raises “an energy of excited atoms in the volume of excited atoms so that at least a portion of the excited atoms in the volume of excited is ionized, thereby generating a plasma with a multi-step ionization process,” as recited in claim 43. Excited atom source” slip op. at 15

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

    “Given the evidence before us, we agree with Dr. Kortshagen that one with ordinary skill in the art would have been motivated, in view of Angelbeck and Pinsley, to use a magnet with Iwamura’s pre-excitation unit and first plasma generation unit—which are located proximate to the ground state atoms source (gas supply 20)—for generating a magnetic field to substantially trap electrons, in order to increase the efficiency of excitation of ground state atoms. Ex. 1102 ¶¶ 142, 159. We credit Dr. Kortshagen’s testimony, as it is consistent with the disclosures of Angelbeck and Pinsley, and other prior art of record. Upon consideration of the parties’ contentions and the evidence in this entire record, we determine that GlobalFoundries has demonstrated that combining the technical disclosures of Iwamura, Angelbeck, and Pinsley is merely a predicable use of prior art elements according to their established functions—an obvious improvement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Therefore, GlobalFoundries has provided an articulated reason with rational underpinnings for modifying Iwamura in view of Angelbeck and Pinsley.” slip op. at 39

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A prior-art reference is considered to be analogous if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. See In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 659. In that regard, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” KSR, 550 U.S. at 417. Here, the field of plasma generation is not limited to the particular type of plasma chamber disclosed in the ’779 patent, as Zond suggests. On the contrary, the prior art of record shows that one of ordinary skill in the art at the time of the invention would have recognized that plasma treatment systems and gas lasers are from the same field of endeavor, and that effects observed in one may be applicable to the other, as explained by 35 Kudryavtsev. Pet. 55; Ex. 1104, 30, 34; Ex. 1102 ¶ 143. In fact, in Pinsley and Angelbeck, the gas is excited in a region between a pair of anode and cathode electrodes to generate a plasma, similar to the ’779 patent. Ex. 1105, 2:31–36; Ex. 1106, 2:45–56; Ex. 1101, 6:21–23 (“Numerous other cathode and anode configurations known in the art can be used with the plasma generator of the present invention.”), Figs. 1–2. In short, both Pinsley and Angelbeck are analogous art because they are within the same field of endeavor as the ’779 patent—namely, plasma generation. Additionally, Pinsley and Angelbeck are reasonably pertinent to the problem addressed by the ’779 patent, at least with respect to generating a magnetic field and using the magnetic field to excite gas atoms efficiently. As we discussed previously, both Pinsley and Angelbeck disclose the application of a magnetic field to improve the efficiency of exciting atoms. Ex. 1105, 2:43–48, Ex. 1106, 1:36–41. Therefore, one with ordinary skill in the art would have looked to the teachings of Pinsley and Angelbeck for how to increase the efficiency of exciting gas atoms for generating a plasma.” slip op. at 35

  Patent outcomesUS 6,805,779 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,805,779
• Apple Inc. v. Contentguard Holdings, Inc.Rehearing denied
  PTAB · Nov 2, 2015 · IPR2015-00448 · APJ Karl D Easthom · IPR · Rehearing

  The Board denied rehearing and left in place the denial of institution on claims 1–18 because Apple did not show an abuse of discretion in the Board’s merits decision.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “proposed modifications were, how they were to be made, and why a person of ordinary skill would have made them. See Dec. 11–21. Petitioner’s Rehearing Request—characterizing the modifications as “a single change” as noted—neither clarifies the Petition nor shows that the Board overlooked or misapprehended a matter. Petitioner correctly notes that the need for extensive modification, alone, does not necessarily doom a proposed ground of obviousness, see Reh’g Req. 5–6; however, extensive modification was just one of many problems obfuscating the asserted ground. The Decision explains that combined with the many other deficiencies of the Petition, Petitioner had not shown a reasonable likelihood of prevailing on any of the challenged claims. See Dec. 11–21 (discussing the Petition’s vague, nested string citations to broad swaths of references; clarity problems created by pervasive use of internal cross-references and nested citations; improper incorporation by reference of the Sherman Declaration to support conclusory statements, thin analysis, and inadequate reasoning; and lack of sufficient information to enable a proper Graham analysis).” slip op. at 3

  None
  Patents in suitUS 8,370,956

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.