• Global Tel*link Corporation v. Securus Technologies, Inc.Institution denied
  PTAB · Dec 16, 2015 · IPR2015-01223 · APJ Barbara A Benoit · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of establishing claims 1–31 unpatentable under the asserted § 103 grounds.

  RulingsInstitution decision

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

    “for inter partes review of claims 1–31 of U.S. Patent No. 7,961,860 B1 (Ex. 1001, “the ’860 patent”). Paper 5 (“Pet.”). Patent Owner, Securus Technologies, Inc., filed a Preliminary Response. Paper 18 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner contends that an inter partes review should not be instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

  • Additional discoveryAdditional discovery, deniedDecided for petitioner

    “instituted because Petitioner failed to identify all real parties-in-interest. Prelim. Resp. 4–15. Patent Owner raised this argument, prior to the filing of” slip op. at 6

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under that standard, claim terms are presumed to be” slip op. at 5

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,961,860
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20

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

    “The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29

  Patent outcomesUS 7,529,357 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,529,357
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21

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

    “The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be 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 at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30

  Patent outcomesUS 8,340,260 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,340,260
• 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
• Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentable
  PTAB · Nov 2, 2015 · IPR2014-00810 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable as anticipated by Silberschatz; Petitioner did not show claims 4 and 8 unpatentable because Silberschatz does not disclose allocating or de-allocating a specific telecommunications resource.

  RulingsFinal written decision

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

    “In this case, the ’637 patent discloses multiple embodiments of telephony and telecommunication resources being allocated and de-allocated, but during prosecution, the applicant removed the modifying limitation of “telecommunication”3 leaving only the term “resource” in the issued claims. Compare Ex. 1004, 60–69 (Application No. 09/072,436) with Ex. 1002, 44–47. The claims, thus, recite “resource” and do not recite “telecommunications resource” nor do they recite “computer resource.” The lack of a limiting term modifying “resource” indicates a scope broader than the scope encompassed by a “resource” that is limited to only a “telecommunications resource” or “computer resource.” Moreover, the Examiner characterized the claims of the application that issued as the ’637 patent as “broader in scope than the claims [in] the parent patent.” Ex. 1002, 95. The Applicant did not dispute the Examiner’s characterization of the claims. Id. at 107. Although the ’637 patent discloses embodiments using “resources,” the ’637 patent does not define explicitly the term “resource.” Therefore, we look to the ordinary meaning of the term as would be understood by one of 3 The term “telecommunication” was recited in the proposed claims of earlier-filed parent Application No. 09/072,436. The ’637 patent claims priority to patent Application No. 09/072,436. See Ex. 1002, 1. ordinary skill in the art. A technical dictionary, IEEE Dictionary4, defines “resource” as “[a]ny capability that must be scheduled, assigned, or controlled by the underlying implementation to assure non[-]conflicting usage by processes.” Id. at 976. As shown by the dictionary definition, one of ordinary skill in the art would understand “resource” is not limited to a telecommunications resource or a computer resource.5 Thus, the ordinary meaning of “resource” is consistent with the term’s use in the ’637 patent, which readily interchanges the term “resources” with “components” and “capability” in the context of computer telephony resources. Ex. 1001, 1:27–29. For example, in one embodiment in the ’637 patent, the telecommunication “resource” is a telephony line card that is coupled to a telephone. Id. at 9:12–15. In other embodiments, the telecommunication “resources” are components or ports coupled via a data bus to a central processing unit system, a data port system, a video system, a network system, a storage controller, and a high speed communication system. Id. at 8:1–27, 10:64–11:10, 11:14–22. In every embodiment in the ’637 patent, 4 IEEE 100: The Authoritative Dictionary of IEEE Standards Terms: Seventh Edition (Standards Information Network, IEEE Press ©2000) (Ex. 3001) (hereinafter “IEEE Dictionary”). 5 Petitioner’s Declarant, Dr. Forys, testified on cross-examination that a person of ordinary skill in the art would have telecommunications experience because all of the embodiments in the ’637 patent are directed to telecommunications. Ex. 2002, 47:2–14. Based on this testimony, Patent Owner argues that the ’637 patent would be understood by a person of ordinary skill in the art in the context of a telecommunications systems. PO Resp. 8–9. We agree the ’637 patent may have been understood in the context of a telecommunications system, however, that does not indicate that a skilled artisan would have understood “resource” to have been limited to only a telecommunications resource. resources are a component or capability of a system that is managed (i.e., identified, allocated, de-allocated) by some module in the service kernel. Id. at 9:27–39, 10:10–14, 10:64–11:10, 11:14–22. Accordingly, we do not agree with Patent Owner’s position, because” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s Declarant, Dr. Forys, opines that a person of ordinary skill in the art relevant to the ’637 patent “would have a B.S. degree in Electrical Engineering, Computer Science, or an equivalent field and one year to two years of industry experience in telecommunications.” Ex. 1003 ¶ 32. Patent Owner does not disagree with Petitioner’s assertions regarding the level of skill in the art, nor does Patent Owner’s Declarant, Dr. Akl, offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’637 patent. PO Resp. 9–10; Ex. 2003 ¶ 42. Based on our review of the ’637 patent, the types of problems and solutions described in the ’637 patent and cited prior art, and the testimony of Petitioner’s Declarant, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, and at least one year of work experience in telecommunications technologies. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “We do agree with Patent Owner’s argument, however, with regards to dependent claims 4 and 8, which require the return of “the allocated telecommunications resources to control of the management module.” Ex. 1001, 21:52–22:6, 22:44–52; see supra, Section II.A.3. Petitioner has not indicated a disclosure in Silberschatz that demonstrates the allocation or de-allocation of a specific telecommunications resource. Therefore, we determine that Petitioner has failed to meet its burden to show Silberschatz anticipates dependent claims 4 and 8.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not agree with Patent Owner’s position, because Petitioner identifies CPU time as a specific resource that is requested (Pet. 23–24), allocated (id. at 25), used (id. at 25), and de-allocated (id. at 26). We credit the testimony of Dr. Forys, who explains how and where Silberschatz discloses each element of the challenged claims. See Ex. 1003 ¶¶ 64–80. Specifically, Dr. Forys testifies regarding the request, allocation, use, and de-allocation of a single type of resource (e.g., CPU time), thereby meeting the limitations of the challenged claims. Id. ¶¶ 74–80. Although Patent Owner correctly points out that Petitioner discusses multiple types of resources, we do not agree that Petitioner discusses or applies the disclosure of Silberschatz inconsistently, because Petitioner at least consistently identifies CPU time as a resource requested, allocated, used, and de-allocated.” slip op. at 21

  Patent outcomesUS 7,324,637 mixed
  Claim construction§ 102 anticipationcites Graham
  Patents in suitUS 7,324,637
• NVIDIA Corporation v. Samsung Electronics Co., LtdInstitution denied
  PTAB · Oct 20, 2015 · IPR2015-01135 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution because NVIDIA did not show a reasonable likelihood that claims 1, 7–9, 12, 13, 17, and 19 would have been obvious over Seo and Kong.

  RulingsInstitution decision

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

    “Patent Owner’s argument is persuasive. As discussed above, Petitioner concedes that neither Seo nor Kong discloses a data strobe buffer that outputs a data strobe signal during a “write operation” or that receives a data strobe signal during a “read operation.” Pet. 35 (“Kong discloses a ‘read’ operation in which the data strobe is output . . . .”); see also Ex. 1107 ¶ 90 (Dr. Jacob testifying that, “[w]hen Seo or Kong talk about outputting a data strobe signal, they are talking about a read operation, because a DRAM outputs the data and data strobe signals during a read operation”). Thus, we are not persuaded that Seo and Kong explicitly disclose or suggest a “first driver configured to output a first data strobe signal to the first input/output node during a write operation” or a receiver “coupled to receive a second data strobe signal from the first input/output node and output a third data strobe signal during a read operation,” as recited in claim 1 of the ’734 patent. Ex. 1101, 8:29–34. Petitioner’s argument that the function of the two data strobe buffers is equivalent, i.e., “regardless of where the data strobe buffer is located (in the memory controller or memory device) it is used for both write and read operations,” is not persuasive, because this argument does not address the claims as written. Pet. 24. Moreover, as noted by Patent Owner, Petitioner does not persuasively argue that it would have been obvious to place the data strobe buffer of Seo and Kong in a memory controller, as opposed to a memory device, such that the data strobe buffer would output a data strobe signal “during a write operation” and receive a data strobe signal “during a read operation.” Prelim Resp. 17 (“Petitioner does not—and cannot—allege that it would have been obvious to place the combined system of Seo and Kong in a memory controller.”). Thus, we are not persuaded that the combination of Seo and Kong, as formulated by Petitioner, discloses or suggests every limitation of independent claims 1 and 17 of the ’734 patent.” slip op. at 8

  • BurdenNot shown unpatentable

    “Patent Owner’s argument is persuasive. As discussed above, Petitioner concedes that neither Seo nor Kong discloses a data strobe buffer that outputs a data strobe signal during a “write operation” or that receives a data strobe signal during a “read operation.” Pet. 35 (“Kong discloses a ‘read’ operation in which the data strobe is output . . . .”); see also Ex. 1107 ¶ 90 (Dr. Jacob testifying that, “[w]hen Seo or Kong talk about outputting a data strobe signal, they are talking about a read operation, because a DRAM outputs the data and data strobe signals during a read operation”). Thus, we are not persuaded that Seo and Kong explicitly disclose or suggest a “first driver configured to output a first data strobe signal to the first input/output node during a write operation” or a receiver “coupled to receive a second data strobe signal from the first input/output node and output a third data strobe signal during a read operation,” as recited in claim 1 of the ’734 patent. Ex. 1101, 8:29–34. Petitioner’s argument that the function of the two data strobe buffers is equivalent, i.e., “regardless of where the data strobe buffer is located (in the memory controller or memory device) it is used for both write and read operations,” is not persuasive, because this argument does not address the claims as written. Pet. 24. Moreover, as noted by Patent Owner, Petitioner does not persuasively argue that it would have been obvious to place the data strobe buffer of Seo and Kong in a memory controller, as opposed to a memory device, such that the data strobe buffer would output a data strobe signal “during a write operation” and receive a data strobe signal “during a read operation.” Prelim Resp. 17 (“Petitioner does not—and cannot—allege that it would have been obvious to place the combined system of Seo and Kong in a memory controller.”). Thus, we are not persuaded that the combination of Seo and Kong, as formulated by Petitioner, discloses or suggests every limitation of independent claims 1 and 17 of the ’734 patent.” slip op. at 8

  None
  Patents in suitUS 7,804,734

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.