- 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 - 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 - R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.No claims unpatentablePTAB · Dec 19, 2017 · IPR2016-01268 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 2 and 3 were not shown unpatentable as obvious over Hon ’043 and Whittemore because the petitioner did not establish a sufficient motivation to combine them.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ordinary skill in the art. Pet. 11; PO Resp. 7–8. In light of the evidence before us, we find that the references themselves represent the level of ordinary skill in the art, and that we need not explicate it further. See Okajima v. Bourdeau, 261 F.3d 12350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art usually is evidenced by the references themselves); In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). C.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 2016, 61:8–19. Petitioner, however, does not provide adequate explanation as to why a person having ordinary skill in the art would think that to be the case. In reaching that determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Ex. 2015 ¶ 98 (internal citations omitted). Dr. Sturges, however, stated at his deposition that he did not do any calculations to determine how factors such as the speed and pressure of the airstream, and the rate of change of the pressure of the airstream as it travels through the ejection holes and into the atomization chamber, would affect the dispersion of the droplets ejected from the ejection holes towards the heating wire in Hon ’043. Ex. 2016, 64:5–66:4. In light of the variables that can affect how the droplets could disperse upon ejection from the ejection holes, Petitioner has not explained adequately why a person having ordinary skill in the art would understand that only a small amount of droplets would contact Hon ’043’s heating wire and that the atomization described in Hon ’043 is inefficient.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented with only the references, and who is normally guided by then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting Innogenetics, 512 F.3d at 1374 n.3 (“We must still be careful not to allow hindsight reconstruction of the references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.”)). Here, Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s proposed rationale relies upon general and conclusory statements from Dr. Sturges regarding thermal dynamics that are not sufficiently supported in the record, and instead appear to be based on impermissible use of hindsight after review of the ’742 patent, rather than on a supported reason to modify the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). In order to establish a motivation to combine the references, Petitioner needed to explain sufficiently what would have led a person of ordinary skill in the art at the time of the invention to consider modifying the Hon ’043 atomizer to include a “heating wire wound on a part of the porous component” as recited in claims 2 and 3. Petitioner failed to provide such an explanation.” slip op. at 16
Patent outcomesUS 8,365,742 not shown unpatentable§ 103 obviousnessPatents in suitUS 8,365,742 - Arris Group, Inc. v. TQ Delta, LLCNo claims unpatentablePTAB · Dec 13, 2017 · IPR2016-01160 · APJ Matthew R Clements · IPR · Final written decision
Claims 1–20 were not held unpatentable because the asserted combination did not teach the construed synchronization signal.
RulingsFinal written decision- Prior constructionPrior construction not adoptedOther
“Owner that our construction in the Decision to Institute is overly broad to the extent it encompasses a synchronization frame. Petitioner relies heavily on column 5, lines 50 to 52 of the ’404 patent, but that disclosure does not unambiguously support Petitioner’s proposed construction. The paragraph, which we reproduce below for context, describes “normal (non-sleep mode) operation”: During normal (non-sleep mode) operation, a phase-lock loop (PLL) 62 receives from the FFT 56 a timing reference signal 62a (see FIG. 1A) via a line 62b. The timing reference signal 62a is transmitted from the transmitter with which the receiver 16 communicates (e.g., the CO transmitter). This signal is advantageously a pure tone of fixed frequency and phase which is synchronized with the Master Clock in the transmitter; its frequency defines the frame rate of the transceivers. Other forms of timing signal may, of course, be used, but use of a pure tone has the advantage of simplicity and reliability even when portions of the transceiver are powered down in accordance with the invention. The PLL 62 locks itself to this signal and drives clock 30 in synchronism with the Master Clock in the driving transmitter. This also synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver. Control of the receiver section is provided by the controller 32. Ex. 1001, 5:37–53 (emphasis added to 5:50–52). Rather than read “this” as referring to timing reference signal 62a, as Petitioner contends, we read “this” as referring to what is disclosed in the preceding sentence—i.e., driving clock 30 in synchronism with the Master Clock in the driving transmitter. The synchronism of clock 30 with the Master Clock in the driving transmitter is what “synchronizes frame counter 34 of the CPE transceiver to the corresponding frame counter of the CO transceiver.” Ex. 1001, 5:50–52.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the arguments and evidence, we are not persuaded that this term requires an express construction. Patent Owner’s proposed construction merely replaces “full power mode operation” with “transmission and/or reception of data during normal operation.” The parties, however, do not dispute the meaning of “full power mode operation.” As a result, an express construction of this term is not necessary in order to resolve the parties’ dispute.” slip op. at 10
- Skill levelOther
“We determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. The contentions in the Petition are based upon Petitioner’s proposed construction of “synchronization signal” as encompassing a synchronization frame—i.e., “allowing for frame synchronization.” See, e.g., Pet. 24, 37–38. We have not adopted that construction, however, for the reasons discussed above. Because our construction of “synchronization signal” excludes a synchronization frame, we are not persuaded that the argument and evidence in the Petition shows that the combination of Bowie, Vanzieleghem, and ANSI T1.413 teaches transmitting/receiving, in full power mode, a “synchronization signal.” Moreover, we agree with Patent Owner that Petitioner’s reliance, in the Reply, upon the teachings of a pilot tone in Vanzieleghem and ANSI T1.413 constitutes a change in theory and, therefore, is beyond the scope of a proper reply. Notwithstanding the mention of “a pilot tone” in paragraph 58 of Dr. McNally’s declaration, the Petition itself unambiguously identifies the synchronization frame, not a pilot tone, as the recited “synchronization symbol.” See, e.g., Pet. 37–38 (citing Bowie’s and ANSI T1.413’s teachings of synchronization frame). We, therefore, do not address whether the pilot tone taught in Vanzieleghem and in ANSI T1.413 teaches the recited “synchronization signal.” As a result, Petitioner has not shown, by a preponderance of the evidence, that claims 1–20 would have been obvious over Bowie, Vanzieleghem, and ANSI T1.413.” slip op. at 15
Patent outcomesUS 8,611,404 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,611,404 - PTAB · Dec 12, 2017 · IPR2017-01027 · APJ Jeremy M Plenzler · IPR · Rehearing
The Board denied Petitioner's rehearing requests, leaving in place the denial of institution because the petitions did not sufficiently support the asserted challenges.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“assessment of all evidence in the record to determine whether the challenged claims would have been obvious. Rather, the Decision to deny institution of inter partes review was based on Petitioner’s failure to establish a reasonable likelihood of success at trial based on the arguments presented in the Petition, and the evidence relied upon in support of those particular arguments. Petitioner has the burden of showing, in its petition, a reasonable likelihood that it would prevail. 35 U.S.C. § 314(a). That reasonable likelihood is measured by considering the analysis offered by Petitioner. 37 C.F.R. § 42.104(b) (setting forth the requirements of a petition, including specificity and identification of support).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“supporting evidence presented in the Petition and determined it insufficient to institute trial. See, e.g., Dec. 10 (“Ultimately, the ’1026 and ’1027 Petitions are deficient because of the failure to explain sufficiently and support the challenges therein.”). We are not persuaded that we abused our discretion in reaching that determination.9 Disagreeing with our Decision is not, by itself, an appropriate basis for rehearing. 8 Even if Aboul-Hosn’s statement was intended only to contrast Figure 23 with Figure 24, the Petition remains deficient for failing to establish sufficiently that Figure 23 is part of the Figure 1–13 embodiment or provide a sufficient rationale to modify the embodiments disclosed in Aboul-Hosn. See Dec. 9–10. 9 Petitioner includes additional argument in its Request directed to rationale for the combination of Aboul-Hosn’s teachings from Figures 1–13 with those from Figure 23. In the Petition, Petitioner did not propose sufficient rationale for combining the various teachings from Aboul-Hosn with one another. See Dec. 10.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,888,728 - Cree, Inc. v. Optolum, Inc.Institution deniedPTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,242,028 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing deniedPTAB · Dec 4, 2017 · IPR2017-00649 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution on claims 1–30 because Petitioner did not show that the Board overlooked or misapprehended its obviousness arguments.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The Decision Denying Institution considered Petitioner’s argument regarding combining Bonella’s power reduction technique and Bonella’s power loss algorithm as it was presented in the Petition. Thus, Petitioner has not established the proposition that the Board overlooked or misapprehended some evidence in the record. A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. Thus, we are not persuaded by this argument.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“disclosed the specific feature alleged to be obvious. Req. Reh’g 12. We disagree. The Decision Denying Institution found that Long and Ashmore did not provide motivation for the specific combination advanced by Petitioner, stating “Petitioner does not point to a motivation to adjust the frequency of the memory banks specifically, simply a general motivation to reduce battery power during power loss.” Inst. Dec. 13. Thus, the Decision Denying Institution stated “we are not persuaded Ashmore [or Long] supports that contention that running at the frequency associated with Power Level 4 during a power loss would have been obvious.” Id. 13–14. “[T]o establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365, 1370 (Fed.Cir.2000) (citation omitted)(emphasis added)). “A determination of obviousness cannot be reached where the record lacks ‘explanation as to how or why the references would be combined to produce the claimed invention.’” Hyundai Motor Co. v. Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24, 2017) (Paper 12) (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). The Decision Denying Institution properly followed this precedent in requiring a specific motivation to make the combination alleged by Petitioner to meet the claimed combination.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“CONCLUSION The Request for Rehearing does not demonstrate that we misapprehended or overlooked any matters raised in the Petition declining to institute review of claims 1–30.” slip op. at 7
§ 103 obviousnessPatents in suitUS 8,301,833 - Smith & Nephew, Inc. v. Conformis, Inc.Rehearing deniedPTAB · Nov 29, 2017 · IPR2017-00372 · APJ James A Worth · IPR · Rehearing
The Board denied Smith & Nephew’s rehearing request, leaving institution denied for claims 1–83 because the petition failed to show a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- BurdenNot reached
“II. DISCUSSION Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes the Board misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“combination of Radermacher and Kenna in which a cutting guide (as in Radermacher) is aligned intra-operatively (as in Kenna), but that the Decision did not address a combination of Radermacher and Kenna in which there is angular alignment (as in Kenna) when the cutting guide is planned pre-operatively (which Petitioner argues to have been taught in Radermacher). First, we regard this latter argument to be a new argument. The argument in the Petition is reproduced above. We conclude that the Petition provided inadequate argument and reasoning for combining the references in this manner, i.e., to take the intra-operative teachings of Kenna and apply them pre-operatively. Neither the Petition nor Declaration explain how this would have been accomplished or persuade us that such a combination would have been obvious (without intra-operative adjustment, as taught in Kenna). In particular, the Petition does not explain adequately how a person of ordinary skill would have included Kenna’s angle adjustment teaching in Radermacher’s prosthesis with a patient-specific surface, rather than rotating Kenna’s cutting guide intra-operatively. Although we appreciate Petitioner’s argument that the combination does not require bodily incorporation of one prior art device into another, we are not persuaded that the Petition adequately set forth what that combination would be, or how it would be achieved. See, e.g., Pet. 43–45 (quoting Kenna and asserting it would have been obvious to combine the teachings of the prior art).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s reliance on Exhibits 1051, 1054, 1055, and 1057 is misplaced because the Petition did not contain developed arguments with respect thereto, and we regard this as a new argument. As such, we determine that we did not overlook or misapprehend any arguments with respect to Exhibits 1051, 1054, 1055, and 1057. To the extent that Petitioner relies on Kenna for the argued limitation, we address that contention below.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,377,129 - Luye Pharma Group Ltd. / Luye Pharma(Usa) Ltd. et al. v. Alkermes Pharma Ireland Ltd.No claims unpatentablePTAB · Nov 28, 2017 · IPR2016-01096 · APJ Lora M Green · IPR · Final written decision
Claims 1–13 and 17–23 were not shown unpatentable because Petitioner did not prove the claimed viscosity was necessarily present in either obviousness combination.
RulingsFinal written decision- BurdenNot shown unpatentable
“In that regard, we note that Petitioner must “meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” PAR Pharm., Inc., 773 F.3d at 1195‒ 96.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we determined that none of the terms in the challenged claims require express construction at that time. Dec. Inst. 6 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only claim terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy)); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner offers explicit constructions of several claim terms (Pet. 19‒22), as did Patent Owner in its Preliminary Response (Prelim. Resp. 9‒12). In its full Response, Patent Owner states that there is no need to expressly construe any of the claim terms. PO Resp. 13‒14. On the present record, we agree with Patent Owner and determine that none of the claim terms require explicit construction for purposes of this Decision.” slip op. at 7
- Skill levelOther
“We conclude that, for practical purposes, there is little difference between Petitioner’s and Patent Owner’s definitions of the ordinary artisan. Thus, our analysis would be the same under either Petitioner’s or Patent Owner’s definition. In addition, the level of ordinary skill in the art in this case is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“Patent Owner argues also that objective indicia of non-obviousness, such as unexpected results and commercial success support the patentability of the challenged claims. PO Resp. 59‒61. As we conclude that the preponderance of evidence of record does not support Petitioner’s obviousness challenge, we need not address Patent Owner’s evidence of secondary indicia.” slip op. at 29
Patent outcomesUS 6,667,061 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,667,061 - Microsoft Corporation v. Smart Skins LLCRehearing deniedPTAB · Nov 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Rehearing
The Board denied Microsoft's rehearing request, maintaining that claims 1, 12, 13, 15, 23, and 24 are entitled to the July 17, 2001 priority date and that Janik and Kehoe are not prior art.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“part of U.S. Patent Application No. 10/087,098 (Ex. 1014, “the ’098 application”), which was filed on March 1, 2002, and that the ’864 patent and the ’098 application claim priority to U.S. Provisional Patent Application No. 60/306,326 (Ex. 1015, “the ’326 provisional”), which was filed on July 17, 2001. Dec. 14–15 (citing Paper 1 (“Pet.”), 10; Paper 14 (“PO Resp.”), 8; Ex. 1001; Ex. 1014, 2). We determined that Smart Skins LLC (“Patent Owner”) had shown sufficiently that the challenged claims of the ’864 patent are entitled to a filing date of July 17, 2001, because the disclosures of the ’098 application and the ’326 provisional (collectively, “the priority applications”) provide written description support for the challenged claims of the ’864 patent. Dec. 14–21.” slip op. at 3
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner
“established by Patent Owner for the challenged claims (July 17, 2001) predates the earliest filing dates of Janik and Kehoe established by Petitioner (September 4, 2001, and October 24, 2001, respectively). Dec. 22. We determined that, as a result, Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Dec. 22. Therefore, we concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 12, 13, 15, 23, and 24 would have been obvious over Janik and Kehoe. Id. at 23. Petitioner argues that, because we erred in determining that the challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“challenged claims of the ’864 patent are entitled to the benefit of the filing date of the priority applications, we should reconsider our determination that Janik and Kehoe are not prior art. Req. Reh’g 15. For the reasons discussed above, we maintain our determination that the challenged claims are entitled to the benefit of the filing date of the priority applications. Thus, we also maintain our determination that Petitioner had not shown sufficiently that either Janik or Kehoe qualifies as prior art to the challenged claims under 35 U.S.C. § 102(e). Petitioner requests that we address the asserted ground of unpatentability based on Janik and Kehoe “conditionally,” even if we do not change our determination regarding the priority date of the challenged claims. Req. Reh’g 15. We are not persuaded, though, that it would be an efficient use of resources to address all of the parties’ arguments and evidence regarding the asserted ground of unpatentability based on Janik and Kehoe when Petitioner has not met its burden to show that Janik and Kehoe are prior art to the challenged claims. Therefore, we decline to “conditionally” address any remaining issues regarding the asserted ground of unpatentability based on Janik and Kehoe.” slip op. at 15
§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,079,864
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.