- Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01264 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–3, 5–7, and 9 are unpatentable as obvious over Zhang and Ding, and over Zhang, Ding, and Sun.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claims 1 and 5 recite “therein,” not “throughout.” The term “therein” means “in there” (i.e., in the first film). That readily apparent meaning unmistakably was conveyed by the Institution Decision. See Inst. Dec. 5–7 (rejecting Patent Owner’s attempt to read “therein” as “throughout.”). As further conveyed by our Institution Decision, Patent Owner’s attempt to incorporate “a mixture” into the limitation is another, unsupported, mechanism that would require nitrogen throughout. See id.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“not adopted. First, Patent Owner proposes to substitute “non-crystalline” for “amorphous.” Id. at 16 (citing Ex. 2003; Ex. 2008). Although both the intrinsic and extrinsic evidence are probative that “amorphous” and “crystalline” are antonyms, the ’324 patent uses the term “amorphous” dozens of times and not once uses the term “non-crystalline.” Further, the meaning of the term “amorphous” is readily apparent in light of the specification; there is no need for extrinsic evidence. See Phillips, 415 F.3d at 1317 (Extrinsic evidence “is less significant than the intrinsic record in determining the legally operative meaning of claim language.”) (internal quotation marks omitted). This is especially so here because the asserted prior art provides an in haec verba disclosure of the “amorphous” aspect of this limitation. See Ex. 1005, 3:39–41 (Ding teaching that the tantalum nitride (TaNx) layer is “amorphous”). In fact, Patent Owner’s proposed construction would not clarify what “amorphous” means; rather, it appears to be a vehicle by which Patent Owner would add a negative limitation prohibiting any portion of the second film being crystalline. See PO Resp. 16 (“As the specification and claims of the patent clearly distinguish between crystalline and amorphous materials and their different characteristics in a barrier film, a second film consisting essentially of amorphous metal nitride requires amorphous metal nitride throughout, and not merely a portion or portions of the film.”). Such a negative limitation is not part of the claim. Second, Patent Owner proposes to substitute “compound containing nitrogen” for “nitride.” Id. (citing Ex. 2004; Ex. 2009; Ex. 2011 ¶¶71–74). Although Patent Owner persuades us that a nitride is a compound containing nitrogen, there is no need to explicitly construe the limitation. The plain and ordinary meaning of “nitride” in light of the specification is readily apparent, and there can be no reasonable dispute in this inter partes review as to whether the “nitride” aspect of this limitation is taught by the asserted prior art. See, e.g., Ex. 1005, 6:64 (disclosing a “TaNx/Ta barrier layer structure”), 3:27 (designating “TaNx” as meaning “tantalum nitride”). Further, if we were to substitute the words “compound containing nitrogen” for “nitride,” we would introduce yet another transitional phrase— “containing”—into the claim. Doing so would obfuscate what the prior transitional phrase (i.e., “composed of,” which, at Patent Owner’s urging, we have construed to mean “consisting essentially of”) modifies.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18–19 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition. 2. Disclosure of Zhang Zhang discloses a semiconductor device that includes a two-layered” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“To meet the limitations specifying that the first film is crystalline and the second film is amorphous, Petitioner cites Ding’s explicit teaching of a two-layered barrier film with a bottom layer being amorphous tantalum nitride and a top layer being crystalline tantalum. See, e.g., Pet. 24–25 (citing Ex. 1005, 3:39–41, 8:1–4). Petitioner argues that a combination of teachings from Zhang and Ding renders the claims obvious. See, e.g., Pet. 24–26, 30–34. In particular, Petitioner argues, with supporting testimony from Dr. Banerjee, that it would have been obvious to a person of ordinary skill in the art “to use crystalline and amorphous top and bottom films for the films 32 and 22 in Zhang’s barrier structure, in view of Ding, to achieve” certain advantages noted in the prior art. Id. at 25–26 (citing Ex. 1003 ¶¶92–96). For example, Petitioner notes that Ding “discloses the desirability of using an amorphous TaNx layer as the bottom layer, so the TaNx is ‘sufficiently amorphous to prevent the diffusion of copper into underlying silicon or silicon oxide surfaces.’” Id. at 24 (quoting Ex. 1005, 3:39–41 (Petitioner’s emphasis)). Similarly, Petitioner notes that Ding “also discloses the desirability of using a crystalline metal film ‘having a tantalum <002> crystalline orientation’ as a top film in the two-layer diffusion barrier because the crystalline orientation ‘enables easy wetting of the tantalum surface by the copper and 13 Petitioner’s claim 5 arguments largely—and, in all relevant aspects, exclusively—rely on its claim 1 arguments. See Pet. 44–46. Hereafter, we cite to only its claim 1 arguments. depositing of a copper layer having a high <111> crystal orientation.’” Id. at 25 (quoting Ex. 1005, 8:1–4). Petitioner further argues that such a combination of teachings would have been obvious because it would have achieved these predictable results (i.e., an amorphous layer to prevent copper diffusion and a crystalline layer to promote copper adhesion) through known techniques. Id. at 32–34. Specifically, Petitioner notes that Zhang and Ding teach similar sputter-deposition processes for forming the top and bottom films. Id. at 32–33 (citing Ex. 1004, 3:21–50; Ex. 1005, 6:63–7:29; Ex. 1003 ¶98); see also PO Resp. 46 (Patent Owner acknowledging that “Zhang and Ding disclose similar sputtering processes.”).” slip op. at 23
Patent outcomesUS 6,538,324 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,538,324 - Taiwan Semiconductor Manufacturing Company Limited / Globalfoundries U.S. Inc. v. Godo Kaisha IP Bridge 1All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01249 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–3, 5–7, and 9 and proposed claims 11–12 are unpatentable as obvious over Ding and Zhang; proposed claim 13 is patentable and allowed by amendment.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“essentially of” for “being composed of.” PO Resp. 11 (citing AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001)). In AFG, the Court noted that, “[i]n 1942, the Court of Customs and Patent Appeals [had] stated that ‘“composed of” should be regarded as synonymous with “consisting of.”’” AFG, 239 F.3d at 1245 (quoting In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942)). However, as further explained in AFG, the Court of Customs and Patent Appeals had “qualified this statement . . . by remarking that ‘the words “composed of” may under certain circumstances be given, in patent law, a broader meaning than “consisting of.”’” Id. (quoting In re Bertsch, 132 F.2d at 1020). The Court in AFG ultimately construed “composed of” to mean “consisting essentially of.” Id. (“[W]e do agree based on the specification and other evidence before us that the term ‘composed of’ in this case is not completely closed. Rather, we think that ‘composed of’ in this case should be interpreted in the same manner as ‘consisting essentially of.’”). Thus, “composed of” means either “consisting of” or “consisting essentially of.” Id. The term “consisting of” prohibits any 4 <111> and <002> are indices that pertain to an orientation or direction of crystals. Ex. 1003 ¶51. unspecified components. Id. (citing PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998)). The term “consisting essentially of” prohibits only unspecified components that materially affect the basic and novel characteristic(s) of a claimed invention. Id. (citing Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1574 (Fed. Cir. 1984)). By arguing that “being composed of” means “consisting essentially of” as opposed to “consisting of,” Patent Owner argues for broader claim scope. For purposes of this Decision, we construe “being composed of” to mean “consisting essentially of,” as Patent Owner argues.5 In conclusion, we construe “first film being composed of crystalline metal containing nitrogen therein,” as recited in independent claims 1 and 5, to mean “first film consisting essentially of crystalline metal containing nitrogen therein.”6” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The parties propose similar definitions of the level of ordinary skill in the art. Petitioner argues that a person of ordinary skill in the art would have had “an equivalent of a Master of Science degree from an accredited institution in electrical engineering, materials science, or physics, or the equivalent, a working knowledge of semiconductor processing technologies for integrated circuits, and at least two years of experience in semiconductor processing analysis, design, and development.” Pet. 10–11 (citing Ex. 1003 ¶64). Patent Owner argues that such an individual would have had “at least a Bachelor’s degree in Electrical, Materials, Mechanical, or Chemical Engineering, or a related degree, and at least two years of experience working in semiconductor processing and fabrication, semiconductor equipment manufacturing, or semiconductor materials.” PO Resp. 18 (citing Ex. 2011 ¶24). Neither party explains in detail why its proposed level of ordinary skill in the art should be adopted nor how the different levels affect the parties’ analyses. Based on the evidence of record, including the testimony of the parties’ declarants, the subject matter at issue, and the prior art of record, we adopt Petitioner’s definition.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“As to Petitioner’s predictable-results assertion, Petitioner persuasively argues that a person of ordinary skill in the art would have added nitrogen to the crystalline tantalum layer of Ding for three independent reasons. First, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would make it more easily removable by chemical mechanical polishing (“CMP”), which removal by polishing both Zhang and Ding teach to do. Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34–37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63). Second, Petitioner argues that the presence of nitrogen in Ding’s crystalline tantalum layer would inhibit, to some additional extent, copper diffusion. Id. at 26–29 (citing Ex. 1003 ¶¶144–146; Ex. 1023, 8). Third, Petitioner argues that adding a small amount of nitrogen to Ding’s crystalline tantalum layer would reduce its resistivity, which was known to help reduce a device’s power consumption and RC delays. Id. at 29–30 (citing Ex. 1003 ¶147; Ex. 1015, 81 (Table 1)). Patent Owner counters that none of these purportedly predictable results are realistic. PO Resp. 46–52. With respect to the first reason offered by Petitioner (to make the first film more susceptible to CMP), Patent Owner argues that: (A) adding only “[a] small amount of nitrogen” to Ding’s crystalline tantalum layer would not change its CMP characteristics; and (B) “[a]dding significant amounts of nitrogen” would result in Ding’s previously crystalline layer becoming amorphous. Id. at 48. Patent Owner does not disclose what it considers “small” and “significant” amounts of nitrogen. Id. As a result, we cannot apply Patent Owner’s argument (even if it were persuasive) to the facts before us. Also, Patent Owner’s argument is based exclusively on declaration testimony that does not cite to any underlying evidence, let alone documentary evidence. See id. at 47–49 (citing Ex. 2011 ¶¶190–98). In contrast, Petitioner’s argument is supported by declaration testimony, which, in turn, is based on underlying evidence, including documentary evidence. See Pet. 24–26 (citing Ex. 1003 ¶¶140, 142, 143; Ex. 1004, 1:30–34, 4:34– 37; Ex. 1005, 7:56–65; Ex. 1019, 12–13; Ex. 1021, 354–63); see also Ex. 1003 ¶139. With respect to the second reason offered by Petitioner (to inhibit, to some additional extent, copper diffusion), Patent Owner argues that, in Petitioner’s asserted combination, “there would be no nitrogen to provide any copper diffusion benefit.” PO Resp. 49. Patent Owner’s argument is premised on Zhang teaching exclusively an upper surface of pure tantalum. Id. But, Zhang explicitly teaches that the upper surface may have a nitrogen content of, for example, 1%, 2%, 3%, or 4%. See Ex. 1004, 3:59–62 (“At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”). With respect to the third reason offered by Petitioner (to reduce resistivity), Patent Owner argues that adding nitrogen would actually increase resistivity. As pointed out by Petitioner, however, Patent Owner’s declarant, Harlan R. Harris, Ph.D., conceded that adding nitrogen does lower resistivity. Reply 17–18 (quoting Ex. 1036, 125:3–20). Dr. Harris testified as follows: Q. When the nitrogen flow ratio is zero in the ’324 patent, and the power is kept constant, wouldn’t that result in a film that could be pure tantalum? A. All three of those data points are at the exact same position on the graph. The N2 concentration, which is the numerator of the ratio, is set at zero. And in this particular position, the nitrogen concentration would be assumed to be zero in the film. Q. So is it within the scope of what’s taught in the ’324 patent to have a film that would have no nitrogen at all? A. It’s also apparent to anyone who is examining this of skill in the art that you can decrease from that number, which is favorable in terms of the value of resistivity by adding flow rate in the data points for all of the positions greater than zero. So you decrease resistivity by the addition of any amount of nitrogen, therefore, a person skilled in the art would not be motivated to not have nitrogen, based on this data. Q. You’re referring to the decrease in resistivity as nitrogen is added? A. Yes. Q. Which is desirable? A. You want the resistivity to go down. Ex. 1036, 124:15–125:20. We are satisfied by each of Petitioner’s proffered reasons for why a person of ordinary skill in the art would have added nitrogen to Ding’s crystalline tantalum layer, as taught by Zhang. Petitioner has shown, by a preponderance of the evidence, that claims 1 and 5 would have been obvious over Ding and Zhang.” slip op. at 24
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“obvious over Ding in view of Zhang. Patent Owner’s proposed claims 11 and 12 are unpatentable because they introduce limitations—nitrogen throughout the first film (claim 11) and nitrogen at the upper surface of the first film (claim 12)—that are met by the very references asserted in the ground of unpatentability involved in this inter partes review. Patent Owner’s Motion to substitute claims 11 and 12 is premised, incorrectly, on Zhang requiring pure tantalum (and, thus, no nitrogen) at the upper surface of its tantalum-rich tantalum nitride film. In fact, Zhang does not require any portion of the tantalum-rich tantalum nitride film to be pure tantalum. Ex. 1004, 3:53–54 (“The tantalum-rich tantalum nitride film has a range of approximately 0-30 atomic percent nitrogen.”). And, Zhang explicitly teaches that the upper surface may include nitrogen. Id. at 3:57– 62 (“A lower atomic percent nitrogen at the upper surface typically gives better adhesion to copper films. At the upper surface, the atomic percent tantalum may be at least 95% and the atomic percent nitrogen may be less than 5% if copper adhesion is particularly problematic.”); Ex. 1036, 40:1–6, 42:2–9, 42:15–21, 54:14–20 (Dr. Harris acknowledging that the upper surface of the film would contain some nitrogen). Accordingly, a preponderance of the evidence establishes that Patent Owner’s proposed claims 11 and 12 are not patentable over the art of record in this inter partes review. Put another way, and as Petitioner argues, claims 11 and 12 (like challenged claim 5) are unpatentable as they claim subject matter that would have been obvious over Ding in view of Zhang. See 35 U.S.C. § 103(a); Amend Opp. 6–7 (“The instituted obviousness ground[] based on Zhang and Ding already include[s] the newly-added limitations Patent Owner seeks to add in its Substitute Claims 11–13. Thus, the Substitute Claims 11–13 remain unpatentable over each of the instituted grounds.”).14 Patent Owner’s Motion to Amend is denied with respect to claims 11 and 12.” slip op. at 33
Patent outcomesUS 6,538,324 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 6,538,324 - Composite Materials Technology, Inc. v. Greatbatch, Ltd.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01441 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Contrary to Petitioner’s arguments, the fact that two references relate to the same general subject matter is not, by itself, sufficient to explain why one of ordinary skill in the art would have sought to modify one reference in view of the other; it demonstrates at most that the two references are in the same field of endeavor. See In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). Nor is an alleged admission that Fife and Stephenson are prior art to the ’075 patent sufficient to explain why these two references would be combined in a manner necessary to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 389, 418–19 (2007) (“[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”). In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”). As Petitioner provides insufficient rationale to explain why one of ordinary skill in the art would have combined the disclosures of Fife and Stephenson in a manner necessary to achieve the claimed invention, it has not demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over those references. And, because challenged claims 2–11 and 13–18 each depend from claim 1, and because the deficiencies in Petitioner’s arguments and evidence regarding claim 1 are not remedied by Petitioner’s arguments and evidence regarding claims 2–11 and 13–18, Petitioner has likewise not demonstrated a reasonable likelihood that the subject matter of those claims would have been obvious over Fife and Stephenson.6” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In support of the Petition, Mr. Frost generally reiterates Petitioner’s arguments, stating: “[a] person of ordinary skill in the art would be motivated to combine the teachings of Fife and Stephenson since both Fife and Stephenson relate to methods for producing tantalum electrolytic capacitors, and both Fife and Stephenson constitute admitted prior art mentioned specifically in the ’075 Patent.” Ex. 1002 ¶ 32. Mr. Frost does not explain, however, why either of these factors would have prompted one of ordinary skill in the art to use Stephenson’s higher formation voltages in Fife. Thus, this testimony is entitled to little, if any, weight. See ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (expert testimony regarding motivation to combine is insufficient if it is “generic and bears no relation to any specific combination of prior art elements” and “fails to explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does”); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (explaining that “[l]ack of factual support for expert opinion going to factual determinations” may “render the testimony of little probative value”).” slip op. at 8
§ 103 obviousnessPatents in suitUS 9,312,075 - PTAB · Oct 6, 2017 · IPR2017-01353 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 6, 8, 11–13, 15, and 18 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 904 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’904 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 8,500,904 - PTAB · Oct 6, 2017 · IPR2017-01351 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, and 4–7 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that Petitioner has not demonstrated a reasonable likelihood that claims 1, 2, and 4–7 are unpatentable over the recited prior art references. Accordingly, we do not institute inter partes review with respect to any of the asserted grounds. IV. ORDER It is hereby ORDERED that inter partes review is not instituted.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Because the reaction of STMP and potato starch in Graux occurs before the starch is added to the gypsum and water mixture, and because the reaction converts the starch and STMP into di-starch orthophosphate and tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s reaction process, we are not persuaded that Graux expressly teaches or suggests a set gypsum that is “formed from”12 calcined gypsum, water, and sodium trimetaphosphate, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded by Petitioner’s argument that one of ordinary skill in the art would have looked to Hjelmeland to determine the amount of STMP to use in Graux. Pet. 21 (asserting that an ordinary artisan would have found it obvious to use the amount of condensed phosphate specified by Hjelmeland in the plaster composition of Graux). Although, as noted by Petitioner, Graux and Hjelmeland both disclose the use of a condensed phosphate, the references use this material in different ways. In particular, Graux uses the condensed phosphate (STMP) to crosslink a potato starch, whereas Hjelmeland discloses adding the condensed phosphate to a gypsum suspension to act as a retarding agent. Ex. 1006, 5:39–50; Ex. 1008, 3:60–4:16. Petitioner does not explain why the concentration of STMP used to retard the setting of a gypsum suspension is in any way related to the amount of STMP required to effectively crosslink a starch. Nor does Petitioner explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink its starch, would have then sought to add STMP to Graux’s mixture in view of Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the same fashion as recited in the claims of the ’980 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). Based on the foregoing, Petitioner has not demonstrated that Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teach or suggest every limitation of independent claim 1. As dependent claims 2 and 4–7 depend directly from claim 1, we are likewise not persuaded that the combination of Graux, ASTM C473-95, Hjelmeland, Sucech, and Summerfield teaches or suggests the subject matter of these claims.” slip op. at 13
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,758,980 - PTAB · Oct 6, 2017 · IPR2017-01350 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that challenged claims 1–7, 10–15, 18, 22, 26, 29, 32–34, and 40 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“After reviewing the parties’ positions, we are not persuaded that Petitioner has demonstrated sufficiently that the prior art references teach or suggest including an enhancing material in the mixture of Graux in an amount such that, when the mixture is cast in the form of a ½ inch gypsum board, the board has a sag resistance of less than about 0.1 inch per two feet in length, as determined according to ASTM C473-95. Petitioner has not directed us to any sag resistance values for gypsum boards made using the ingredients disclosed in Graux and measured according to ASTM C473- 95,13 or evidence sufficient to establish that the claimed sag resistance value is an inherent property of a gypsum-containing product formed from the mixture disclosed in Graux. See Trintec Indus., Inc. v. Top–U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive material is ‘necessarily present,’ not merely probably or possibly present, in the prior art.”) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). With regard to Petitioner’s argument that the ’284 patent discloses prior art gypsum boards having a sag resistance of less than 0.1 inch, we note that Petitioner has not directed us to any evidence demonstrating that these products contain the enhancing materials recited in independent claims 1, 2, 4, 5, 10, 34, or 40. Further, we agree with Patent Owner that the mere fact that a person of ordinary skill in the art would have been aware of the test methods set forth in ASTM C473-95 does not establish that boards tested according to 13 Even if we were to agree with Petitioner that Graux discloses a mixture of calcined gypsum, water, and a claimed enhancing material––which, for the reasons discussed above, we do not––Petitioner’s argument still suffers from this deficiency. those test methods would have a particular sag resistance value, or that a person of ordinary skill in the art would have been able to produce a board having a particular sag resistance value. Under the heading “Significance and Use” in the section discussing Humidified Deflection (i.e., sag resistance), ASTM C473-95 states only that “[t]his test method covers a procedure for evaluating the deflection of gypsum board.” Ex. 1009, 8 (Section 49.1) (emphasis added). We are not persuaded that such a disclosure would have taught or suggested combining the components of Graux to achieve a gypsum board having a sag resistance of less than about 0.1 inch per two foot length of said board. Based on the foregoing, Petitioner has not demonstrated that Graux discloses every limitation of independent claims 1, 2, 4, 5, 10, 34, or 40, or that one of ordinary skill in the art would have sought to modify Graux in view of ASTM C473-95, or any of the other recited prior art references, to arrive at the subject matter of the challenged claims. And, as each of the challenged dependent claims depends, directly or indirectly, from one of independent claims 1, 5, and 10, we are also not persuaded that these claims would have been obvious over Graux, ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerland.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner also does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP to Satterthwaite’s mixture. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Thus, Petitioner has failed to sufficiently identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’284 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 18
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,342,284 - Nokia Solutions And Networks US LLC / Nokia Solutions And Networks OY v. Huawei Technologies Co. Ltd.Rehearing deniedPTAB · Oct 6, 2017 · IPR2017-00592 · APJ Michelle N Wormmeester · IPR · Rehearing
Denied Nokia’s rehearing request; the Board found no abuse of discretion in denying institution on the asserted obviousness grounds against claims 1–3, 5, 8, 9, 11, 16, 17, and 19.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“overlooks significant evidence” that Petitioner presented. Req. Reh’g 5. Petitioner first argues that it showed there is an explicit teaching to combine the Tdoc list with TS 23.125. Id. at 6–8. In support of that argument, Petitioner identifies evidence cited in the Petition, which Petitioner now contends was proffered in support of demonstrating a motivation to combine the Tdoc list with TS 23.125. Id. Petitioner has not identified, however, any matters that we have misapprehended or overlooked. We considered Petitioner’s evidence and argument. In our Decision, we determined that Petitioner had not sufficiently shown a rationale to combine the references in order to arrive at the claimed invention. Inst. Dec. 18–20. It is insufficient to show that a skilled artisan would have combined the references. Id. Petitioner had the burden of also demonstrating that a skilled artisan would have arrived at the claimed invention, namely a CRF providing a TPF with address information of a charging system, which we found Petitioner had not shown. Id.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“argument that a skilled artisan would have known that the CRF could have provided the address information of a charging system to the TPF. Inst. Dec. 17–18. We found that Petitioner did not explain sufficiently, however, the rationale for why a skilled artisan would have implemented a CRF providing a TPF with address information of a charging system, rather than implementing either a User Equipment (UE) providing a TPF with the address information or a TPF that is already preconfigured with the address information, in view of the teachings of TS 23.125 and the Tdoc list. Id. at 18–20.” slip op. at 4
- Expert testimonyDecided for petitioner
“be provided only by a CRF, which Petitioner did not show, we note that the address information of a charging system could be preconfigured in the TPF and then added to a charging rule at the TPF once the rule has already been provided to the TPF. See Pet. 54 (directing us to expert testimony that “[t]he address information could either be pre-configured in the TPF or provided by another node”) (quoting Ex. 1003 ¶ 157). That scenario does not require a CRF providing a TPF with the address information of a charging system, as claimed.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,798,575 - PTAB · Oct 6, 2017 · IPR2017-01352 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–4, 6, 8, and 10 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDenied
“comprising calcined gypsum, water, an accelerator, and one or more enhancing materials selected from a group that includes STMP. Ex. 1038, 32:2–9. Petitioner does not direct us to any embodiment or teaching in Graux in which STMP is added directly to a mixture of gypsum, water, and an accelerator. Instead, Petitioner relies on the addition of a cross-linked starch in Graux as satisfying the requirement that the claimed matrix of set gypsum is prepared from a mixture comprising sodium trimetaphosphate. Pet. 33. On this record, we are not persuaded that this disclosure is sufficient to show that STMP is present in the mixture of gypsum, water, and an accelerator in Graux.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As discussed above, however, Petitioner has not established sufficiently that Satterthwaite discloses adding STMP or any other salt of a condensed phosphate directly to the disclosed mixture of water, gypsum, and mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’914 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 20
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,142,914 - PTAB · Oct 3, 2017 · IPR2017-01088 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 2 was unpatentable under any of the three § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to the challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed board ownDecided for patent owner
“materials,” for purposes of this Decision we need only resolve whether the proper construction of the term “enhancing materials” is broad enough to encompass boric acid. Example 2 of the ’236 patent states that samples were prepared by mixing beta calcium sulfate hemihydrate, an accelerator, and water with either “0 g additive (control samples), 3 g of STMP (inventive samples), or 3 g of other additives (comparative samples).” Ex. 1030, 13:41–46. According to Table 2 of the ’236 patent, boric acid is one of the “other additives” used in making the “comparative samples.” Id. at 14:22. The ’236 patent explains that “[t]he additives employed in the comparative samples (outside the scope of the invention) are representative of other materials that have been employed to attempt to improve resistance of gypsum board to sagging under conditions of high humidity.” Id. at 14:8–13 (emphasis added). As Patent Owner points out, the ’236 patent further characterizes the board made using boric acid as one of the “noninventive comparative boards.” Id. at 14:28–32. We find this discussion of comparative examples as being outside the scope of the invention constitutes a clear indication that the “patentee disavow[ed] the full scope of a claim term . . . in the specification.” Thorner, 669 F.3d at 1365. As a result, these comparative examples, including a composition comprising gypsum, water, an accelerator, and boric acid, are “outside the reach of the claims of the patent.” SciMed, 242 F.3d at 1341; see also Prelim. Resp. 32–34 (Patent Owner referring to boric acid as a “conventional additive[]”). Therefore, when viewed in the context of the specification, the correct construction of “enhancing material” cannot include boric acid.” slip op. at 8
- BurdenNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Thus, on this record, we are not persuaded that Graux discloses, expressly or inherently, the combination of calcined gypsum, water, an accelerator, and one or more of the enhancing materials recited in claim 2. Petitioner does not rely on Kerr to cure this deficiency. Based on the foregoing, Petitioner has not demonstrated that the combined teachings of Graux and Kerr disclose or suggest every limitation of independent claim 2. Therefore, we conclude that Petitioner has not demonstrated a reasonable likelihood that claim 2 is unpatentable over Graux and Kerr.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,425,236 - PTAB · Oct 3, 2017 · IPR2017-01086 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 7–9, and 54–57 were unpatentable over either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Claims of a patent that will expire within 18 months from the Notice of Filing Date, however, are construed using “a district court-type claim construction approach,” provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such a motion, and Petitioner does not dispute that the ’550 patent expired shortly after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary, we will construe the claims of the ’550 patent using “a district court-type claim construction approach.” 37 C.F.R. § 42.100(b); Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Petitioner provides proposed constructions for the terms “accelerator,” “set gypsum-containing product,” and “enhancing material(s).” Pet. 11–15. Patent Owner responds to Petitioner’s proposed constructions with its own proposed constructions of these terms. Prelim. Resp. 21–28. Upon review of Petitioner’s and Patent Owner’s arguments and supporting evidence, however, we determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“mineral wool. This deficiency undermines Petitioner’s argument that a person of ordinary skill in the art would look to Hjelmeland to determine how much STMP or condensed phosphate to add to Satterthwaite’s composition. Rather, in view of our determination regarding the disclosure of Satterthwaite, the more appropriate inquiry is whether, in view of Hjelmeland, a person of ordinary skill in the art would have had reason to add STMP or other condensed phosphate to the starch-gypsum-water mixture of Satterthwaite in the first place. Petitioner, however, does not explain adequately why one of ordinary skill in the art, having already utilized STMP to crosslink the starch, would have then sought to add STMP or any other condensed phosphate to Satterthwaite’s mixture in view of Hjelmeland’s disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). As a result, Petitioner has failed to identify a reason why a person of ordinary skill in the art would have combined the disclosed elements in the art in the same fashion as recited in the claims of the ’550 patent. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”).” slip op. at 19
- Expert testimonyOther
“pyrophosphate. Id. Consistent with Mr. Harlos’ testimony, Patent Owner’s declarant, Dr. Bruce, testifies that the STMP of Graux is “consumed” during the crosslinking reaction.9 Ex. 2001 ¶ 110.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,632,550
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.