- Juniper Networks, Inc. / Ruckus Wireless, Inc. et al. v. Chrimar Systems, Inc.All claims unpatentablePTAB · Dec 29, 2017 · IPR2016-01397 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1, 2, 7, 26, 29, 38, 39, 40, 47, 55, and 69 are unpatentable as obvious over the asserted prior art combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner indicates that the only difference between the parties’ respective definitions of the level of ordinary skill in the art is that Petitioner uses the phrase “at least.” PO Resp. 10. According to Patent Owner, the phrase “at least” is “too open ended” and “would result in an expert, who has a Ph.D. and 15 years of experience, being considered an ordinary artisan.” Id. Patent Owner, however, does not identify any specific instance in which the difference between the parties’ respective definitions of the level of ordinary skill in the art impacts the analysis or conclusions of either party, or either party’s declarant, in this case. See id. Our findings and conclusions in this case would be the same under either party’s definition of the level of ordinary skill in the art. To the extent necessary, though, we adopt Patent Owner’s definition, which is supported by the declaration of Dr. Vijay K. Madisetti. Id.; Ex. 2038 ¶ 26. As such, we determine that a person of ordinary skill in the art would have had a B.S. degree (or equivalent) in electrical engineering or computer science and three years of experience in the design of network communications products, and would have been familiar with data communications protocols, data communications standards (and standards under development at the time, including the 802.3 standard), and the behavior of data communications products available on the market.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“second pairs of contacts used to carry BaseT Ethernet communication signals.” Ex. 1001, 17:14–16. In a decision on institution in IPR2016- 01391, we construed the term “BaseT” in a related patent to mean “twisted pair Ethernet in accordance with the 10BASE-T or 100BASE-T standards.” Juniper Networks, Inc. v. Chrimar Systems, Inc., Case IPR2016-01391, slip op. at 11–12 (PTAB Dec. 22, 2016) (Paper 9). Our construction is consistent with Petitioner’s proposal that the term “BaseT” be construed to mean “10BASE-T and 100BASE-T.” Pet. 5. Our construction also is consistent with the construction adopted by the United States District Court for the Eastern District of Texas in a related case. Ex. 2021, 18. Further, Patent Owner “does not contest” our construction. PO Resp. 12. We note that our findings and conclusions in this case are not dependent on a particular construction of the term “BaseT.” Nonetheless, because neither party disputes our prior construction of that term, we adopt it in this case. Specifically, we construe the term “BaseT” in claim 1 to mean “twisted pair Ethernet in accordance with the 10Base-T or 100Base-T standards.”” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed construction is not the broadest reasonable interpretation. First, Patent Owner does not direct us to any intrinsic evidence to support its proposed construction, but instead relies on a single piece of extrinsic evidence. PO Resp. 12–13. Specifically, Patent Owner cites to a document that discusses the term “protocol” in the context of explaining how “networks that make up the Internet” communicate with one another. Ex. 2047, 1. That, however, is not the context in which the term “protocol” is used in the ’838 patent. For example, the ’838 patent relates to tracking electronic equipment in an Ethernet network. Ex. 1001, 1:27–30, 17:13–23. As a result, we are not persuaded that the extrinsic evidence cited by Patent Owner establishes the meaning of the term “protocol” in the context of the ’838 patent. Second, Patent Owner’s proposed construction addresses the term “protocol” in isolation from the remainder of the claim language. By limiting the term “protocol” to a mutually agreed upon method of communication, Patent Owner’s proposed construction appears to require a communication protocol. Claim 2, though, recites a detection protocol, not a communication protocol. Id. at 17:24–26. Claim 2 further specifies that the detection protocol is based on different magnitudes of DC current flow detected by the central piece of network equipment via Ethernet contacts. Id. at 17:13–26. Patent Owner does not explain specifically why the central piece of network equipment must mutually agree upon a method of communication with other network equipment in order to detect different magnitudes of DC current flow. See PO Resp. 12–13; Pet. Reply 26–27. Third, the specification of the ’838 patent indicates that the detection protocol does not require a mutually agreed upon method of communication. For example, the ’838 patent describes one embodiment as follows: The existence of a connection between hub 1 and central module 15a is monitored by test voltage source 64 and test voltage monitor 66 through a pair of receive data lines. Current from test voltage source 64 flows through a data line to an isolation transformer within hub 1. The current flows through the primary winding of the isolation transformer and returns on the other receive data line to the test voltage monitor 66. An interruption in the flow of current is detected by the test voltage monitor 66. . . . Similarly, current sourced onto a transmit line from signal modulator 7 and isolation power supply 8 through remote module 16a to the isolation transformer of PC 3A which returns on the other transmit line is monitored by test voltage monitor 84” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“phantom power circuit would have degraded the Ethernet data signal is not persuasive. Patent Owner’s declarant, Dr. Madisetti, states that “[s]witching the resistor would create noise that would degrade the Ethernet data propagation and reduce bandwidth,” but does not otherwise explain or provide support for that statement. Ex. 2038 ¶ 86. In contrast, Petitioner’s declarant, Mr. Crayford, explains that the resistor in Bloch would have produced low frequency signals, which would have been unlikely to interfere with the higher frequency data signals of an Ethernet network. Pet. Reply 11; Ex. 1046 ¶¶ 49–51. Mr. Crayford also explains that even if the resistor in Bloch would have caused some interference with the Ethernet data signals, it would have been within the knowledge and capabilities of a person of ordinary skill in the art to separate the low frequency resistor signals from the high frequency Ethernet data signals, such as by using a filter. Pet. Reply 11; Ex. 1046 ¶ 49; Ex. 2039, 172:20–173:3. Patent Owner’s argument that applying operating power to the transformers in Bloch would saturate the coils also is not persuasive. Patent Owner’s argument is premised on annotations that Petitioner added to Figure 1 of Bloch in the Petition. PO Resp. 27 (citing Pet. 44). Specifically, Petitioner added a red line to Figure 1 of Bloch to indicate the flow of DC current through the system, but, as Patent Owner points out, the red line only shows current flowing through one side of the transformer. Pet. 44; PO Resp. 27. Petitioner’s declarant, Mr. Crayford, clarified during his deposition that the annotations to Figure 1 were intended to illustrate the direction of current flow, and that, even if not shown expressly by the annotations, the current clearly flows through both sides of the transformer. Ex. 2039, 167:14–169:22. Specifically, Mr. Crayford stated that “I did not choose to highlight both of the pairs of the twisted pair which is the current path, but clearly they’re parallel connectors connected to the same transformers with the power and return path on the center tap,” so “they probably should be highlighted.” Id. at 167:23–168:4. Thus, contrary to Patent Owner’s argument, Petitioner does not propose applying operating power to just one side of the transformers in Bloch. Further, we are not persuaded by Patent Owner’s argument that, even if operating power was applied to both sides of the transformer in Bloch, there would still be a saturation problem. Bloch teaches that the phantom power circuit “is connected to the two center taps of the transformers,” thereby indicating that applying operating power to the center taps of the transfomers would work. Ex. 1005, 3:9–23. Further, consistent with the teaching of Bloch, Mr. Crayford explained that the objective of balancing the coils on either side of the transformer is “very well known.” Ex. 2039, 169:14–22.” slip op. at 48
Patent outcomesUS 9,019,838 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,019,838 - PTAB · Dec 26, 2017 · IPR2017-02201 · APJ Daniel J Galligan · IPR · Order
The Board dismissed the petition and terminated the proceeding as to all parties because the parties had settled their dispute.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“and 37 C.F.R. § 42.72, these sections relate, respectively, to termination of “[a]n inter partes review instituted under this chapter” and to termination of “trial,” which “means a contested case instituted by the Board based upon a petition.” 35 U.S.C. § 317; 37 C.F.R. §§ 42.2, 42.72. This proceeding is in the preliminary stage, and no decision whether to institute a trial has been made. As such, we treat the parties’ request as seeking dismissal of the Petition to thereby terminate the proceeding.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“U.S. Patent No. 6,684,060 B1. Mot. 3–4. The parties represent that “there are no other agreements or understandings, oral or written, between DTS and Avago, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding.” Mot. 3. Under these circumstances, we determine that it is appropriate to dismiss the Petition (Paper 1) and terminate this proceeding. See 37 C.F.R. §§ 42.71(a), 42.74(a). We also determine that it is appropriate to treat the Agreements as business confidential information to be kept separate from the patent file. See 37 C.F.R. § 42.74(c).” slip op. at 2
NonePatents in suitUS 6,684,060 - SAP America, Inc. v. Lakshmi ArunachalamAll claims unpatentablePTAB · Dec 21, 2017 · CBM2016-00081 · APJ Kevin F Turner · CBM · Final written decision
Claims 20 and 21 are unpatentable under § 101 and § 103; the motion to amend proposing claims 22–49 is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner argues that “[b]ased on the technologies disclosed in the ’506 patent, one of ordinary skill in the art at the time of the alleged invention would have had the equivalent of a Bachelor’s degree or higher in computer science or computer engineering, as well as at least 3–5 years of academic or industry experience in the relevant field.” Pet. 10 (citing Ex. 1002 ¶ 22). Although Patent Owner does not address the level of ordinary skill in its Patent Owner’s Response, Patent Owner does opine about the same in its Motion to Amend. Therein, Patent Owner argues that: a person of ordinary skill in the art in 1995 would have been a person who had a degree in computer science, or the equivalent of that degree, and some substantive experience with Web technologies then being developed and considered by persons then working on internet systems. [Ex. 2006, 23] It would have been very rare to find anyone to have had a computer degree and as much as three to five years of experience in the area of Web technology as of November 1995. (Id.) Mot. Amend 5–6. Based on the positions of Petitioner and Patent Owner, we find mostly agreement as to the level of skill of such ordinarily skilled artisans and we are persuaded that one of ordinary skill in the art at the time of the invention would have had the equivalent of a degree in computer science or computer engineering, as well as some substantive experience 29 with Web technologies then being developed and considered by persons then working on Internet systems. This level of skill is considered and applied in the grounds below.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“networked object,” and that we “willfully left out ‘Individual’ and only construed ‘Network Object.’” PO Resp. 36. Patent Owner is correct that we did not construe “individual networked object.” The reason is that it is not a term recited in the challenged claims, nor claim 14, from which the challenged claims depend. We construed “networked object,” i.e., without “individual,” because it is a term recited in the claims. Patent Owner also argues that the proper construction of “networked object” is “the information entries and attributes in a DOLSIB [distributed on-line service information base].” Id. (citing Ex. 1001, 8:50–54). We do not agree. Although the specification of the ’506 Patent details that “[t]he networked object identity 11 identifies the information entries and attributes in the DOLSIB as individual networked objects,” that is not a definition of “network objects.” We continue to find that the broadest reasonable construction, in view of the specification, of “networked object” is “an object that operates within a network or transmitted over a network.” We are not persuaded that “individual networked object” need be construed because it is not a claim term, and we are not persuaded that every recitation of “networked object” must refer to an “individual networked object.” Patent Owner argues that we did not construe the claim term “attributes,” which should be understood as “characteristics of an object.” Id. at 36–37 (citing Ex. 1001, 4:45–58, 23:19–25). Petitioner counters that the passages cited by Patent Owner do not support the proffered definition, because those passages do not contain the word “attribute.” Pet. Reply 4. Although Patent Owner’s construction is not unreasonable, claim 14 already recites that the step of “associating an object identity with information entries and attributes,” so that “attributes” need not be referred to as “characteristics of an object,” since such an association is already directly recited in the claims. As such, we are not persuaded that the claim term “attributes” needs explicit construction. Similarly, Patent Owner argues that “information entries” should be construed as “values of the characteristics of an object.” PO Resp. 37 (citing Ex. 1001, 4:45–58, 23:19–25). Again, we find it unnecessary to tie “information entries” to an object, since the association is already provided 12 in claim 14. Therefore, we are not persuaded that the claim term “information entries” needs explicit construction. With respect to the claim term “virtual information store,” we construed that term as “an information store in which information entries and attributes are associated with a networked object identity,” as discussed above. Patent Owner argues that we have not given proper effect to the word “virtual,” arguing that the proper construction is “a transient information store that is temporarily created and which contains information entries and attributes associated with a networked object identity.” PO Resp. 39–41. Patent Owner cites to the specification of the ’506 Patent (Ex. 1001, 3:1–5, 8:47–54), and “[t]he IBM Computer Dictionary” (id.), but, as Petitioner points out, Patent Owner has not “submitted this dictionary as an exhibit or provided any further information to locate the dictionary.” Further, the sections of the ’506 Patent cited by Patent Owner are not explicit about the store being “transient” or “temporarily created;” this is an inference drawn by Patent Owner. See PO Resp. 40. The introduction of the terms “transient” and “temporarily” to the construction adds more ambiguity to the claim term because the specification of the ’506 Patent does not discuss how long any “virtual information store” would be stored or maintained. In addition, we are not persuaded that Patent Owner’s provision of affirmatively containing the information entries and attributes is necessary because having a store in which the information entries and attributes are associated with a networked object identity would have been understood by ordinarily skilled artisans as being a store containing those elements. 13 Therefore, we are not persuaded that the claim term “virtual information store” requires a different construction and we maintain the construction provided in the Institution Decision, which is reproduced above.” slip op. at 11
- BurdenUnpatentable
“not have been obvious to make any changes to Lawlor’s system,” and that “the whole purpose of Lawlor is to establish a system built upon an existing software and infrastructure that would require no changes.” PO Resp. 80–81 (emphasis in original). We do not agree. We agree with Petitioner that Patent Owner misinterprets Lawlor’s teachings, “improperly concluding that Lawlor teaches away from any combination or modification.” Pet. Reply 24 (emphasis in original). Lawlor explains that “[b]ecause the central computer interacts with the user's bank as a standard POS or ATM network node, no significant software changes are required at the banks’ computers,” demonstrating that Lawlor makes use of a standard ATM network and existing external systems without significant modification. Ex. 1004, Abstr. As explained by Dr. Sirbu, incorporation of techniques described in CORBA into Lawlor’s system would not require modification to the external systems of Lawlor or additional processing at the central computer of Lawlor. Ex. 1002 ¶ 72. Lawlor system does not restrict or disparage modification, and Patent Owner has not pointed out any portion that purportedly restricts or disparages modification. Patent Owner also argues that Lawlor does not disclose “an OSI Layer 7 application layer switch as is the VAN Switch in FIG. 5B.” PO Resp. 79. As discussed above, however, challenged claims 20 and 21 do not recite a VAN switch, and the only consideration of such a switch comes from Patent Owner’s claims constructions that we do not adopt. As such, we are persuaded that Petitioner has shown by a 45 preponderance of the evidence that claim 20 is unpatentable over the combination of Lawlor and CORBA, and that the subject matter of claim 21 is unpatentable over the combination of Lawlor, CORBA and Billings.” slip op. at 45
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“2. 37 C.F.R. § 42.221(a)(2)(i) Rule 221(a)(2)(i) requires that the amendments in a motion to amend must respond to a ground of unpatentability involved in the trial. Patent Owner’s new claims do not respond to any ground of unpatentability in the trial. Those grounds are based on 35 U.S.C. §§ 101, 103 and directed at claims 20 and 21. Pet. 28–73. Both claims 20 and 21 depend on claim 14 and the grounds of unpatentability consider all of the elements of claim 14. Thus, for example, new claim 25, which recites “[t]he apparatus of claim 14, wherein the user device is a multi-media device,” does not purport to demonstrate that such a claim brings the subject matter into the scope of § 101, nor that such a multi-media device would not be obvious over Lawlor, CORBA, and Billings. See Mot. Amend 9–17. Patent Owner’s analysis addresses claims 22–49 as a group and does not address all of the elements of the new claims. Id. Patent Owner also fails to indicate if any of the new claims include any feature of the challenged claims. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(i). 3. 37 C.F.R. § 42.221(a)(2)(ii) and 35 U.S.C. § 326(d)(3) Rule 221(a)(2)(i) requires that the amendment may not seek to enlarge the scope of the claims of the patent. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(3), which details that “[a]n amendment under this subsection may not enlarge the scope of the claims of the patent.” Patent Owner appears to take this rule as merely requiring that “the new claims do not enlarge the scope of any of the old claims.” Mot. Amend 3. 52 The “old claims,” however, are the only two claims existing in the ’506 Patent, namely claims 20 and 21. They are the “scope of the claims of the patent,” and the scope cannot refer to any claim that might have existed during the prosecution of the ’506 Patent. See Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1329–30 (Fed. Cir. 2003). Therefore, we look to the scope of claims 20 and 21 to determine the scope of the claims of a patent. Proposed new claims in the Motion to Amend improperly enlarge the scope of claims 20 and 21. For example, new claim 27 recites “[t]he apparatus of claim 14, wherein the service is configurable specific to the context of a Web merchant.” This proposed claim is broader, in at least one aspect, than claims 20 and 21, which also depend from claim 14, because it contains none of the elements of claims 20 and 21, although it adds an additional element, i.e., “the service is configurable specific to the context of a Web merchant.” For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(2)(ii) or 35 U.S.C. § 326(d)(3). 4. § 42.221(a)(3) and 35 U.S.C. § 326(d)(1)(B) Section (a)(3) of Rule 221 discusses that a patent owner must propose a reasonable number of substitute claims, and goes on to discuss that “[t]he presumption is that only one substitute claim would be needed to replace each challenged claim, and it may be rebutted by a demonstration of need.” The claims subject to the instant proceeding are claims 20 and 21, such that the normal presumption would be for the inclusion of two substitute claims. 53 Patent Owner does not address why the proposed 28 claims are a reasonable number of substitutes for the 2 challenged claims, so Patent Owner cannot be said to have rebutted the one for one presumption by any demonstration of need. We also note that this rule is fully supported by 35 U.S.C. § 326(d)(1)(B), which details that for the amendment of a patent, for each challenged claim, “a reasonable number of substitute claims” must be proposed. Petitioner points out that the meaning of “reasonable number of substitute claims” has been previously addressed by the Board, providing “in the absence of special circumstance, a challenged claim can be replaced by only one claim, and a motion to amend should, for each proposed substitute claim, specifically identify the challenged claim which it is intended to replace.” Opp. 1–2 (citing Idle Free at 5). Furthermore, as Petitioner addresses, Patent Owner has failed to identify which of the challenged claims are intended to be replaced by the new claims. Id. Patent Owner’s response appears to be that “PO does not propose a reasonable number of substitute claims, because it is not necessary.” PO Reply 2. This, however, is not responsive. For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(a)(3) or the statutory requirements of § 326(d)(1)(B). 5. 37 C.F.R. § 42.221(b)(1) Rule 221(b)(1) requires that a motion to amend must show the changes clearly and set for the support in the original disclosure of the patent for claim that is added. In the case of new claims 22–49, Patent Owner does 54 not indicate any changes from the claims subject to the present proceeding. The claims are indicated as being new, so that no changes from the pending claims are discussed at all. See Claim App’x. In addition, Patent Owner argues that written description support for the new claims can be found in a chart provided in a reexamination of the patent. Mot. Amend 3 (citing inter partes Reexamination Control No. 95/001,129). We note that such incorporation by reference is not permitted under our rules. 37 C.F.R. § 42.6(a)(3). As well, as Petitioner points out, Patent Owner has not demonstrated that the claims provided in the chart are the same as the new claims. Opp. 4. Given this deficit, Patent Owner cannot successfully meet the regulatory requirements under 37 C.F.R. § 42.221(a) or (b)(1) regarding written description support, based on the present record. Additionally, Patent Owner has failed to provide any mapping of the new claims to those old claims, and, as Petitioner points out, the Board determined during the cited inter partes reexamination that no written description support was provided for a number of limitations identical to those recited in the new claims. Id. (citing Ex. 1007, 32–36). For at least these reasons, we find that Patent Owner has not complied with the substantive requirements of 37 C.F.R. § 42.221(b)(1). 6. Conclusion As discussed above, Patent Owner has not demonstrated compliance with 37 C.F.R. §§ 42.221(a), 42.221(a)(2)(i), 42.221(a)(2)(i), 42.221(a)(3), or 42.221(b)(1) or 35 U.S.C. § 326(d)(1)(B) and (3). As such, Patent Owner has failed to meet the substantive requirements for a motion to amend.” slip op. at 52
Patent outcomesUS 7,340,506 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · KSR · GrahamPatents in suitUS 7,340,506 - 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 - Tricklestar LLC v. Embertec Pty Ltd.All claims unpatentablePTAB · Dec 20, 2017 · IPR2016-01336 · APJ Stacy B Margolies · IPR · Final written decision
Claims 1–4, 7, and 9 are unpatentable as anticipated by EP ’379; claims 5 and 6 are unpatentable as obvious over EP ’379 and EP ’752.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We determine that the level of ordinary skill proposed by Petitioner and Petitioner’s declarant is consistent with the challenged patent and the asserted prior art, and we therefore adopt that definition of the level of ordinary skill in the art for the purposes of the analysis below. See Ex. 1001, 1:14–15 (“The invention relates to aspects of the monitoring of electrical power supply to electrical equipment.”); Ex. 1002 ¶ 1 (“The present invention relates to a method and system to provide power saving for electronic devices while such devices are in the standby mode and are not in use, particularly for a setting accommodating multiple electronic devices especially in the end-user sector.”); Ex. 1003 ¶ 1 (“The present invention relates to an automatic means switch device used to disconnect a load from” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we do not need to expressly construe “input” (claim 1), “electrical input” (claim 9), “sensor” (claims 1 and 9), and “alert device” (claim 5) to determine whether Petitioner has shown by a preponderance of the evidence that claims 1–7 and 9 are unpatentable.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“EP ’379 was published April 22, 2009. Ex. 1002, [43]. Because EP ’379 was published before the earliest possible invention date of record in this proceeding, Petitioner has shown by a preponderance of the evidence that EP ’379 is prior art to claims 1–4, 7, and 9 of the ’099 patent at least under 35 U.S.C. § 102(a).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 16. As illustrated above, Petitioner adds red ovals around what it contends, and with which we agree, correspond to the claimed sensor and microprocessor: infrared receiver unit 10 and microprocessor 12. Id. EP ’379 discloses that infrared receiver unit 10 is coupled to microprocessor 12 and that the infrared receiver unit monitors wireless output signals from a remote control. Ex. 1002, Fig. 3, ¶¶ 24, 26. Specifically, EP ’379 discloses that “the signals of the remote controls of electronic devices connected to the subject controller [are] sensed, identified, and interpreted by the controller.” Id. ¶ 23; see also id. ¶ 26 (stating that “the remote control signals controlling the devices connected to the controller can also be sensed by the controller”). According to EP ’379, “[t]he controller unit identifies as to which electronic device’s remote control the user has depressed by means of the signal receiver (10) on itself.” Id. ¶ 24. EP ’379 also discloses that the microprocessor terminates power supplied to the external electrical device based upon the absence of detection of signals from the remote control. Id. ¶ 26. EP ’379 states the following: The controller can be set to a predetermined time period in order to save power, and if no signal is received within this time period from a remote control of any device connected to it, the controller can turn OFF such devices in turn or at the same time according to a predetermined power saving rule. Id. EP ’379 adds an example of a user setting the automatic turn-off period to three hours. Id. Under this example, according to EP ’379, “if the user does not depress any key on any remote control of any electronic device connected to the controller, or if no signal is sensed by the controller within three hours, the controller may power off the electronic devices connected to itself in sequence according to an automatic turning-off rule.” Id. In sum, Petitioner shows by a preponderance of the evidence that claim 1 is unpatentable as anticipated by EP ’379.” slip op. at 20
Patent outcomesUS 9,106,099 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,106,099 - PTAB · Dec 19, 2017 · IPR2016-01107 · IPR · Final written decision
Claim 21 was not shown unpatentable under § 103 over Neilson, Kelly, and Miller because the references did not teach the nozzle limitations without hindsight, and secondary considerations weighed against obviousness.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Based on the record before us, we determine that the phrase, “a nozzle oriented towards the splash shield,” means “a nozzle pre-positioned such that it points at the splash shield,” and the phrase, “directing rinsing fluid onto the splash shield using the nozzle,” means “spraying rinsing fluid onto the splash shield from the pre-positioned nozzle.” Our claim constructions are supported by the claim language for at least two reasons: First, the phrase, “a nozzle oriented towards the splash shield,” describes a component of a mixing machine. Claim 21 recites: “providing a mixing machine having . . . a nozzle oriented towards the splash shield.” Ex. 1001, 7:1–5. This limitation describes the structure of a mixing machine that is used to perform the claimed method. As Petitioner explains, “[c]laim 21 is a method claim that separately recites attributes of the provided mixing machine and a step of directing rinsing fluid.” Pet. Reply 4. “Oriented” describes the position of the nozzle in the machine. The nozzle is oriented before it is used to direct rinsing fluid onto the splash shield. In other words, the nozzle is pre-positioned. Second, the claim drafter used the term, “positionable,” rather than” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3. Level of Ordinary Skill in the Art We accept Dr. Slocum’s definition of a person having ordinary skill in the art (“PHOSITA”) as an engineer with at least an undergraduate degree in mechanical engineering or related discipline and at least three years of professional or research experience in the design of consumer or medical products that utilize fluid systems. Ex. 1010 ¶ 20. Dr. Maynes states that he does not necessarily agree with Dr. Slocum’s definition, but does not provide and alternative definition or no persuasive reasoning as to why Dr, Slocum’s definition is incorrect. Ex. 2023 ¶ 6. We also rely on Petitioner’s references as reflecting the level of ordinary skill in the art at the time of the invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“limited to automatic rinsing, Miller discloses an electronically controlled nozzle 129. Pet. Reply 12. Petitioner argues that it would have been a simple substitution to modify Kelly’s spray device 56 with Miller’s electronically controlled nozzle 129 and that the teachings of Kelly and Miller would have led a skilled artisan to orient Miller’s electronically controlled nozzle 129 toward Neilson’s lid 16 and direct rinsing fluid thereon. Id. at 12–13 (citing Ex. 1010 ¶¶ 69, 82–85; Ex. 2027, 169–72). We are not persuaded by Petitioner’s argument for two reasons. First, Petitioner’s reply argument relies on impermissible hindsight. The combination of Neilson, Kelly, and Miller does not teach or suggest the nozzle limitations of claim 21 without relying on the claim as a roadmap for selecting and modifying the teachings. Miller teaches nozzle 129 for spraying cleaning fluid onto a blender spindle after each use. Ex. 1004 ¶ 55, Figs. 17, 18. Miller also discloses a splash shield in the form of a tubular sleeve inserted into a mixing container during blending. Id. ¶ 42; Ex. 1005, 4:1–4, 4:33–36. Like Neilson’s lid 16, Miller’s splash shield is manually removed for cleaning. Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Although Miller’s nozzle 129 is pre-positioned, it is not pointed at a splash shield. See Ex. 1004 ¶ 55, Fig. 18 (showing nozzle 129 for dispensing cleaning fluid onto spindle 114). To meet the nozzle limitations of claim 21, Kelly’s nozzle would need to be modified from a manually positionable nozzle to one that is pre-positioned such that it points at a splash shield. Such a modification is not suggested by Miller, which does not teach or suggest a nozzle pointed at a splash shield and instead teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Thus, even if combined, Neilson, Kelly, and Miller do not, absent hindsight, teach or suggest a method of rinsing a splash shield in which a nozzle is pre-positioned such that it points at the splash shield and rinsing fluid is sprayed onto the splash shield from the pre-positioned nozzle.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Slocum that is not supported by Miller, and we, thus, decline to afford it substantial weight. Pet. Reply 13 (citing Ex. 1010 ¶¶ 69, 84, 85); see also Pet. 28 (citing Ex. 1010 ¶ 77).8 In paragraph 69, Dr. Slocum testifies that, “in the case of Miller,” the angle of the nozzle is adjusted “to clean . . . the splash shield.” Ex. 1010 ¶ 69. In paragraph 85, Dr. Slocum testifies that Miller teaches “the rinsing fluid [is] used for the splash shield.” Id. ¶ 85. In paragraph 77, Dr. Slocum testifies that Miller discloses using a nozzle oriented towards a splash shield for directing rinsing fluid onto the splash shield. Id. ¶ 77. Dr. Slocum’s testimony is inconsistent with Miller, which teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In fact, on cross-examination, Dr. Slocum conceded that Miller does not disclose automatic cleaning of the sleeve (splash shield) 8 See supra note 7. and that Miller’s nozzle is not pointed at the sleeve. Ex. 2027, 189:8– 190:11. Petitioner also relies on Dr. Slocum’s testimony that a PHOSITA reading Kelly would have substituted an electronic valve for Kelly’s manual valve and would have “put a bunch of them in at a bunch of different angles,” so when the valves are actuated, the whole thing is cleaned. Ex. 2027, 169:5–172:9; see Pet. Reply 13. In our view, the cited testimony is not credibly based on the teachings of the prior art references, as opposed to the teachings of the ’662 patent. Whereas Dr. Slocum opines that it would have been obvious to clean a splash shield using electronically operated nozzles (id.), Neilson, Kelly, and Miller all teach manual cleaning of a splash shield. Ex. 1002, 4:13–20; Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In view of the inconsistencies between Dr. Slocum’s testimony and the teachings of Miller, we do not give substantial weight to his opinion that the method of claim 21 would have been obvious to a PHOSITA in view of Neilson, Kelly, and Miller.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,520,662 - Sony Corporation v. Fujifilm CorporationRehearing grantedPTAB · Dec 18, 2017 · IPR2017-00618 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–3 on anticipation by Hennecken and obviousness over Hennecken with Albrecht II, with or without Dugas, under Basis 1.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“believes we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or reply. 37 C.F.R. § 42.71(d). Additionally, Petitioner, as the party challenging the Decision, has the burden of showing the Decision should be modified. Id. When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2002) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Albrecht Declaration that a POSA would have understood Hennecken to be disclosing “a plurality of servo bands on each of which is written a different servo signal for tracking control of the magnetic head” as required by independent claim 1, and Patent Owner provides evidence in the Messner Declaration that a POSA would have understood that Hennecken does not teach that a different servo signal is written on each servo band for tracking control. See, e.g., Pet. 22–25; Ex. 1016 ¶¶ 105–113, 174–177; Prelim. Resp. 29–33; Ex. 2003 ¶¶ 88–98. This conflicting expert testimony creates a genuine issue of material fact regarding how a POSA would have understood Hennecken. For purposes of deciding whether to institute an inter partes review, we must view any issues of material fact created by testimonial evidence in the light most favorable to Petitioner. See 37 C.F.R. § 42.108(c). Thus, for purposes of this Decision, we must resolve the dispute between Dr. Albrecht and Dr. Messner regarding how a POSA would have understood Hennecken in Petitioner’s favor.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayInstituted
“reasons as to why a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II. Pet. 39–41; Ex. 1016 ¶¶ 231–237. In the Preliminary Response, Patent Owner argues that “a POSA would not have been motivated to use the techniques of embedding information in the low frequency transitions, as disclosed in Albrecht II, in order to embed a servo stripe number, as disclosed in Hennecken for the simple reason that Hennecken plainly teaches away from such a combination.” Prelim. Resp. 38. Patent Owner relies on Dr. Messner’s testimony to support its contentions. Id. at 38–41; Ex. 2003 ¶¶ 109–116. The conflicting expert testimony creates a genuine issue of material fact regarding whether a POSA would have been motivated to combine the teachings of Hennecken and Albrecht II as Petitioner proposes. For purposes of this Decision, we must resolve this dispute between Dr. Albrecht and Dr. Messner in Petitioner’s favor. See 37 C.F.R. § 42.108(c). The parties will have the opportunity to further develop these facts and” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,355,805 - Los Angeles County Metropolitan Transportation Authority v. Transport Technologies, LLCAll claims unpatentablePTAB · Nov 17, 2017 · IPR2016-01077 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 1, 3, 6, and 8 are unpatentable over Hassett ’183, and claims 5 and 10 are unpatentable over Hassett ’183 and Hassett ’389.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“As we discussed in our Decision to Institute, “a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Catalina Marketing Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Even though the preamble provides antecedent basis for the claim term “registrant,” deleting the preamble would not affect the structure of the invention recited in claim 1. The body of claim 1 not only defines a structurally complete vehicle occupancy monitoring system with a transmitter, a sending transponder, and a reading data collector, but the body of the claim substantially overlaps with the recitation of the preamble (compare Ex. 1001, 3:26–28, with id. at 3:29–37). Similarly, the body of claim 6 describes a complete process and also substantially reiterates the preamble; “receiving the claim by a registrant as to number of occupants in a vehicle and reading the signal from the vehicle that identifies the registrant as the vehicle transits the designated section of highway” (compare id. at 4:13–16, with id. at 4:22–25).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claims recite language broader than that of the disclosures cited by Patent Owner. See Van Geuns, 988 F.2d at 1184. We are not persuaded by Patent Owner’s arguments to construe the term “registrant” to refer to a specific, instead of a generic, program so as to exclude registering one’s vehicle because Patent Owner’s construction impermissibly imports limitations from the specification. See PO Resp. 20; see Van Geuns, 988 F.2d at 1184; see Inst. Dec. 10–11. We further disagree with Patent Owner that the construction of “registrant” should be revised to account for its use in the claims because we agree with Petitioner that the body of claim 1 does not require the registrant to have made the “claim as to the number of occupants in the vehicle” and claim 6 does not impose any further limitations on the registrant itself. See Reply 2. We also decline to consider whether “registrant” could refer alternatively to an entity and a person because it is not necessary to resolve the controversy before us. See id. at 3; see Vivid Techs., 200 F.3d at 803. Because the specification of the ’101 patent does not define explicitly the term “register” or “registrant,” we refer to the ordinary and customary meaning of these terms, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. See Translogic Tech., Inc., 504 F.3d at 1257. To determine the ordinary and customary meaning of the terms, we refer to its dictionary definition. The dictionary definition for the term “register” is “to enter in or as in a record or list; enroll or record official” and definition for the term “registrant” is “a person who registers.” Webster’s New World College Dictionary 4th Edition, 1999 (Ex. 3001, 4). In our Institution Decision, we concluded that the claim term “registrant” encompasses a person who has registered their vehicle or enrolled in a program. Inst. Dec. 10–11. Registering one’s vehicle constitutes recording officially the ownership of the vehicle, such as with a state department of motor vehicles, consistent with the dictionary definition of register set forth above. Based on the arguments and evidence adduced at trial, we are not persuaded to deviate from our preliminary construction of the claim term “registrant.”” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s Declarant, Mr. Andrews, testifies that a person of ordinary skill in the art relevant to the ’101 patent “would have a Bachelor of Science in Electrical or Computer Engineering or the equivalent, plus two years of experience with automated toll roads, intelligent transportation systems, RFID tracking systems, or similar experience.” Ex. 1008 ¶ 49. Patent Owner does not offer any contrary explanation regarding who would qualify as a person of ordinary skill in the art relevant to the ’101 patent and indicates that it “does not disagree with [Petitioner’s] definition.” PO Resp. 9. Based on the arguments and evidence adduced at trial, we see no reason to modify our decision to adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention.” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“the complete record, and in particular, based on the portions of Hassett ’183 cited by Petitioner and Mr. Andrews’s testimony in the Petition and the arguments and evidence adduced at trial, we agree with Petitioner that one of ordinary skill in the art would have understood that the vehicle operator (i.e., driver) disclosed in Hassett ’183 would, in some cases, be a registered owner of a vehicle, and thus, we are satisfied that Petitioner establishes sufficiently that Hassett ’183 teaches the “registrant” recited in claim 1. See Pet. 7; see Ex. 1008 ¶ 78; see Ex. 2015, 39:3–6; see Reply 21. We further agree with Petitioner that the teachings of the VIN and identifying signal disclosed in Hassett ’183, when considered in light of the background and state of the art, would have been understood by the ordinarily skilled artisan to disclose (implicitly) a licensing authority with which a vehicle is registered and a program administrator for automatic tolling systems, thus mirroring the two types of registration discussed above in Section II.A.3. See Pet. 11–13 (citing Ex. 1008 ¶¶ 32, 34, 77–79); see Ex. 1008 ¶¶ 32–39; see Ex. 2015, 67:7–19. Thus, we are satisfied that Petitioner establishes sufficiently that Hassett ’183 teaches the “program administrator” recited in claim 1. We are also satisfied that Petitioner establishes sufficiently that the disclosure of a VIN and an identifying signal for the vehicle-borne transponder in Hassett ’183 teaches the “code” recited in claim 1. We credit the testimony from Mr. Andrews that the VIN identifies indirectly the registered vehicle owner via the vehicle title and the factual evidence cited in paragraphs 32 through 39 of Mr. Andrews’s Declaration. See Ex. 1008 ¶ 78. We further credit his testimony that the transponder identifying signal (which can encompass the VIN) would be unique at least because it encompasses the VIN, through which a registered owner could be identified. Reply 18 (citing Ex. 2015, 62:20–63:1, 73:16–18, 86:16–20). In view of the above, we are satisfied that Petitioner demonstrates, by a preponderance of the evidence, that Hassett ’183 teaches the “sending transponder” as recited in claim 1.” slip op. at 22
Patent outcomesUS 6,980,101 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,980,101 - Tradestation Technologies, Inc. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Nov 17, 2017 · CBM2016-00086 · APJ Sally C Medley · CBM · Final written decision
Claims 1–21 are unpatentable under § 101 because they claim an abstract economic practice without an inventive concept.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“I. INTRODUCTION TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition requesting a covered business method patent review of claims 1–21 of U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the transitional program for covered business method patents.2 Paper 2 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1–21 of the ’247 patent (Paper 8 (“Dec.”)).” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“We have considered Petitioner’s showing and all of Patent Owner’s arguments, and determine, for all of the above reasons, Petitioner has shown sufficiently that claims 1–21 of the ’247 patent are not directed to patent eligible subject matter under 35 U.S.C. § 101. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has shown, by a preponderance of the evidence, that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101. IV. ORDER It is: ORDERED that claims 1–21 of the ’247 patent are patent-ineligible under 35 U.S.C. § 101; and” slip op. at 28
- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art 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 15
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“we determine that Petitioner has shown4 that claim 1 is directed to the abstract idea of receiving market information, color-coding graphical areas based on market information, and then updating the display based on newly received market information to assist a trader to make an order, which is a fundamental economic practice. Claim 1, the sole independent claim, recites in the preamble a method for displaying market information corresponding to a commodity being traded at an electronic exchange. The method steps include receiving market data including a quantity of an order at a first price level, displaying a first and second graphical area corresponding to a first and second price level in an axial direction, color-coding the first and second graphical areas with a first and second color respectively, and updating the first and second graphical area such that the first graphical area is color-coded with the second color and the second graphical area is color-coded with the first color. We agree with Petitioner that claim 1 encompasses the abstract idea of displaying financial information in a manner that makes it easier to understand and facilitate trades on an exchange, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 31–38 (citing CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper)); Ex.” slip op. at 18
Patent outcomesUS 7,818,247 unpatentable§ 101 eligibilitycites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,818,247
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.