A Picture is Worth a Thousand Words in Establishing Public Use When Utility is Ornamental
Stephen G. Adrian | April 3, 2023
In re WinGen LLC
Decided: February 2, 2023
Before Lourie, Taranto, and Stoll (Opinion by Lourie)
Summary
After reading this nonprecedential decision, one may wonder why it was not designated precedential, in view of quotes from the decision such as “what is necessary for an invalidating prior public use of a plant has not been considered by this court” and “This case therefore presents a unique question.” Nonetheless, a number of very interesting topics are raised regarding different ways to secure patent protection (a plant patent and/or a utility patent), and what may be considered an invalidating public use. This decision becomes more interesting when exploring the background of the patent in question which was not discussed in the decision, namely, why was a reissue pursued in the first place. Based on the author’s opinion, the reissue application may have become necessary due to a misunderstanding of the invention by both the Examiner and the prosecuting attorney.
Background
U.S. Patent No. 9,313,959 is directed to a Calibrachoa plant. Claim 1 is representative:
1. A Calibrachoa plant comprising at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, wherein said pattern extends from the center of the inflorescence and does not fade during the life of the inflorescence,
and wherein the Calibrachoa plant comprises a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.
Reissue Application 15/229,819 was filed as a broadening reissue to delete “representative seed having been deposited under ATCC Accession No. PTA-13363”.[1] During prosecution of the reissue application, a final rejection was made that included rejections for lack of written description, nonstatutory double patenting, lack of enablement, and prior public use. On appeal to the Board, the Board reversed all the rejections except for the prior public use rejections. The Board found that a display of ‘Cherry Star’ had been accessible to the public at an event at The Home Depot. This event was hosted by Proven Winners North America LLC, a common shareholder with the original assignee of the ‘959 patent, Plant 21 LLC. Proven Winners is a brand management and marketing entity. Plant 21 entrusted Proven Winners with samples of ‘Cherry Star’ to show at a private event at The Home Depot. At the event, the attendees were not permitted to take cuttings, seeds, or tissue samples of the plant. However, the attendees were provided with a leaflet to bring home that included a photograph and brief description of the plant. In addition, the visitors were under no obligations of confidentiality. The visitors were not provided with any gene or breeding information regarding ‘Cherry Star’. The handout is shown below:
The Board’s decision also commented that it was undisputed that a complete invention comprising all the claimed characteristics[2] was on display at The Home Depot event.
WinGen appealed to the CAFC, arguing that the Board erred in finding prior public use when all the claimed features were not made available to the public. In particular, the attendees would not have been aware of or able to readily ascertain that ‘Cherry Star’ resulted from a “single half dominant gene”, and thus the display was not an invalidating prior public use.
Discussion
Under pre-AIA 35 U.S.C. 102(b), an applicant may not receive a patent for an invention that was in public use “more than one year prior to the date of application in the United States.” To determine an invalidating public use, the court considers whether the purported use (1) was accessible to the public or (2) was commercially exploited. Here, the CAFC commented that there was only one prior case involving prior public use of a plant (Delano Farms v. Cal. Table Grape Comm’n, 778 F.3d 1243 (Fed. Cir. 2015). That case involved the unauthorized growing of the claimed grapes in locations visible from public roads. Although the grapes were viewable to the public, they were not labeled in any way and there was no evidence that anyone recognized the grapes as the claimed varietal.
The CAFC distinguished this prior case from what occurred at The Home Depot event. At the event, ‘Cherry Star’ was indisputably identified. Although the handout itself was not a public use, the leaflet confirms that the physical plant on display was in fact ‘Cherry Star’.
The CAFC further commented that the use of ‘Cherry Star’ is purely ornamental, in contrast to the grapes in Delano Farms.
The CAFC noted that this case presents a unique question with respect to a purpose of ornament than other decisions regarding alleged public uses. For example, in Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007), there was no evidence showing the invention was used for its intended purpose (visual display of a keyboard did not constitute public use because it was not connected to a computer or other device).
Although this all makes sense, whatever happened to WinGen’s argument regarding the claimed genetics (“comprises a single half-dominant gene”)? The CAFC dismissed this argument as WinGen “did not meaningfully present such an argument to the Board. We agree with the Director that such an argument was forfeited.” Had such an argument been made, it is likely there would have been a different outcome.
Background Notes
I was curious why the reissue became necessary. I looked at the prosecution history of the original patent and noted several interesting things that occurred during prosecution. Prior to the first action, there were several third-party prior art submissions. This is indicative that there were competitors concerned about a utility patent issuing. One submission included a photograph of ‘Cherry Star’. This photograph was initially entered by the USPTO, but then later expunged after the patent applicant filed a petition. A subsequent third-party submission included another photograph from a publication describing ‘Cherry Star’ which was entered into the record.
The Examiner’s first office action included numerous rejections. An interview was conducted prior to filing a response which seemed productive in that the Examiner suggested amendment to include the semi-dominant gene as found in the deposited variety ‘Cherry Star’. However, there was also an objection made by the Examiner regarding the use of “tissue” in the specification instead of “seed” in reference to the biological material which was deposited. The applicant proceeded with the Examiner’s suggested amendment, but this may have been the mistake that led to the need for a reissue application. The original specification described that the plant is produced from tissue having been deposited. The use of “tissue” seems to have meant the genetic material as opposed to seeds. As described in the specification:
Additionally, and as known in the art, Calibrachoa plants can be reproduced asexually by vegetative propagation or other clonal method known in the art. For example, and in no way limiting, a Calibrachoa plant having at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, can be reproduced by (a) obtaining a tissue cutting from said plant, (b) culturing said tissue cutting under conditions sufficient to produce a plantlet with roots and shoots; and (c) growing said plantlet to produce a plant,
In other words, the plants themselves are asexually reproduced. Growing plants from the seeds may not produce the claimed plant.
[1] Observed by the author from the image file wrapper of the reissue application.
[2] This admission or lack of dispute proves detrimental to the patentee.
A Claim term referring to an antecedent using “said” or “the” cannot be independent from the antecedent
Andrew Melick | February 24, 2023
Infernal Technology, LLC v. Activision Blizzard Inc.
Decided: January 24, 2023
Moore, Chen, Stoll. Opinion by Chen.
Summary:
Infernal sued Activision for infringement of its patents to lighting and shadowing methods for use with computer graphics based on nineteen Activision video games. Based on the construction of the claim term “said observer data,” Activision filed a motion for summary judgment of non-infringement. The CAFC agreed with the District Court’s analysis of the noted claim term and affirmed the motion for summary judgment of non-infringement.
Details:
Infernal owns the related U.S. Patent Nos. 6,362,822 and 7,061,488 to “Lighting and Shadowing Methods and Arrangements for Use in Computer Graphic Simulations” providing methods of improving how light and shadow are displayed in computer graphics. Claim 1 of the ‘822 patent is provided:
1. A shadow rendering method for use in a computer system, the method comprising the steps of:
[1(a)] providing observer data of a simulated multi-dimensional scene;
[1(b)] providing lighting data associated with a plurality of simulated light sources arranged to illuminate said scene, said lighting data including light image data;
[1(c)] for each of said plurality of light sources, comparing at least a portion of said observer data with at least a portion of said lighting data to determine if a modeled point within said scene is illuminated by said light source and storing at least a portion of said light image data associated with said point and said light source in a light accumulation buffer; and then
[1(d)] combining at least a portion of said light accumulation buffer with said observer data; and
[1(e)] displaying resulting image data to a computer screen.
(Emphasis added).
The parties agreed to the construction of the term “observer data” as meaning “data representing at least the color of objects in a simulated multi-dimensional scene as viewed from an observer’s perspective.” The district court adopted this construction. Based on this construction and the plain and ordinary meaning of the limitation “said observer data” in step 1(d), Activision filed a motion for summary judgment of non-infringement, and the district court granted the summary judgment.
On appeal, Infernal argued that the district court misapplied its own construction of “observer data.” Infernal argued that “observer data” can refer to different data sets in steps 1(a), 1(c) and 1(d), each different data set independently satisfying the “observer data” construction. Step 1(a) recites “providing observer data,” step 1(c) recites “comparing at least a portion of said observer data,” and step 1(d) recites “combining … with said observer data.” The reason Infernal applies this construction is due to their infringement theory summarized below:
In its infringement theory, for step 1(a) Infernal refers to albedo (color data), normal vector, position, diffuse, depth, and other observer data; for step 1(c), Infernal refers to normal vector and position data; and for step 1(d), Infernal refers to only albedo data. Thus, Infernal’s infringement theory relies on applying different obverser data for steps 1(a), 1(c) and 1(d). Infernal argued that “said observer data” in step 1(d) can refer to a narrower set of data than “observer data” in step 1(a) because both independently meet the district court’s construction of “observer data.”
In analyzing Infernal’s argument, the CAFC stated the principal that “[in] grammatical terms, the instances of [‘said’] in the claim are anaphoric phrases, referring to the initial antecedent phrase” citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). The CAFC further stated that based on this principle, the term “said observer data” recited in steps 1(c) and 1(d) must refer back to the “observer data” recited in step 1(a), and concluded that “the ‘observer data’ in step 1(a) must be the same “observer data” in steps 1(c) and 1(d).” The CAFC stated that this analysis applies even though the district court’s construction of “observer data” encompasses “at least color data.” In concluding that term “observer data” cannot refer to different data among steps 1(a), 1(c) and 1(d), the CAFC stated:
Although the initial “observer data” in step 1(a) includes data that is “at least color data,” the use of the word “said” indicates that each subsequent instance of “said observer data” must refer back to the same “observer data” initially referred to in step 1(a). An open-ended construction of “observer data” (“data representing at least the color of objects”) does not permit each instance of “observer data” in a claim to refer to an independent set of data.
Regarding the district court’s finding that Infernal failed to raise a genuine issue of material fact, Infernal argued that the district court erred in its finding that the accused video games cannot perform the claimed steps in the specified sequence. The district court held that Infernal failed to raise a genuine issue of material fact as to the accused games performing limitation 1(d): “combining … with said observer data.”
The CAFC agreed with the district court. Referring to Infernal’s infringement theory diagram, the CAFC stated that for step 1(a), Infernal identified “observer data” as albedo (color data), normal vector, position, diffuse, depth, and other observer data, but for step 1(d), Infernal identified “said observer data” as only albedo (color data). “Because it is undisputed that the mapping of the Accused Games’s ‘observer data’ in step 1(a) is different than the mapping of the “observer data” in step 1(d), … there is no genuine issue of material fact as to whether the Accused Games infringe [step 1(d)].” The CAFC also pointed out that Infernal’s mapping for step 1(d) improperly excludes data that is mapped to “a portion of said observer data” in step 1(c).
Comments
In a footnote, the CAFC stated that this analysis is consistent with other cases in which the use of the word “said” or “the” refers back to the initial limitation, “even when the initial limitation refers to one or more elements.” When drafting claims, if you intend for a later recitation of the same limitation to refer to an independent instance of the limitation, then you will need to modify the language rather than merely using “said” or “the.”
It appears that if step 1(d) in Infernal’s claim referred to “at least a portion of said observer data,” Infernal would have had a better argument that the observer data in step 1(d) can be a narrower data set than the “observer data” in step 1(a). The CAFC also pointed out that Infernal knew how to do this because that is what they did in step 1(c) and chose not to in step 1(d).
Obvious Claim Limitation Fails to Present Different Issues of Patentability Needed to Deny Collateral Estoppel
Fumika Ogawa | February 16, 2023
Google LLC V. Hammond Development International, Inc.
Decided: December 8, 2022
Moore, Chen, and Stoll. Opinion by Moore.
Summary
On appeal from an inter partes review (IPR) decision finding some claims of a first patent not unpatentable over prior art, where counterpart claims of a related, second patent had been invalidated in another IPR decision, the CAFC found that the second IPR decision has collateral estoppel effect on certain challenged claims of the first patent where slight difference in claim language immaterial to the question of validity in the underlying decision does not present different issues of patentability.
Details
Google filed IPR petitions against Hammond’s patents including U.S. Patent Nos. 10,270,816 (“’816 patent”) and No. 9,264,483 (“’483 patent”). Hammond’s challenged patents relate to a communication system that allows a communication device to remotely execute one or more applications. The specification shared by these patents discloses that the inventive system enables a user to check a bank account balance or airline flight status by using a cell phone or other communication devices to interact with application servers over a network, which in turn access database storing applications so as to perform the desired functionalities. As seen in Figs. 1A-1D, for example, the system may be implemented using a single application server or multiple application servers.
In the ‘816 IPR, Google challenged all the claims of the patent, asserting different prior art combinations against different subsets of claims. Relevant to this case are obviousness challenges of claims 1, 14 and 18 which recite, among other things, one or both of two particular limitations referred to as first[1] and second[2] “request for processing service” limitations, as summarized below:
| Claims | “request for processing service” limitations recited | References/Basis |
| Independent claim 1 | Both first and second limitations | Gilmore, Dhara, and Dodrill |
| Independent claim 14 | First limitation | Gilmore and Creamer |
| Claim 18 dependent from claim 14 | Second limitation | Gilmore, Creamer and Dodrill |
As to claim 1, Google asserted that Gilmore and Dodrill in combination would meet the first and second limitations. As to claim 14, however, Google did not rely on Dodrill for the first limitation in particular. Instead, Google included Dodrill solely to obviate the second limitation as recited in claim 18 dependent from claim 14.
The above choice of references caused trouble to Google. The Board, finding Gilmore and Dodrill in combination as teaching both the first and second limitations in claim 1, determined that the combination of Gilmore and Creamer would not do so with the first limitation as recited in claim 14. Further, Google’s assertion of invalidity as to dependent claim 18 also failed with the contrary finding of claim 14; even though Google did rely on Dodrill for the second limitation as recited in claim 18, that reliance did not extend to the first limitation in parent claim 14. On June 4, 2021, a final written decision was issued in the ‘816 IPR, determining that claims 1–13 and 20–30 would have been obvious, but not claim 14 and its dependent claims 15–19.
On April 12, 2021, prior to the ‘816 IPR decision, the ‘483 IPR had concluded in a final written decision invalidating all the challenged claims for obviousness over prior art including Gilmore and Dodrill. Among those invalidated claims was claim 18 of the ‘483 patent, which recites both the first and second “request for processing service” limitations as in claim 18 of the ‘816 patent.
Google appealed the IPR rulings on claims 14-19 of the ‘816 patent to the CAFC. Google asserted, among other things, that collateral estoppel effect of the invalidity determination of claim 18 of the ‘483 patent renders claim 18 of the ‘816 patent also unpatentable. Finding collateral estoppel as applicable to this case, the CAFC reversed as to claims 14 and 18, and affirmed as to claims 15-17 and 19.
No forfeiture of collateral estoppel
As a preliminary matter, the CAFC found that Google’s omission of its collateral estoppel argument in the IPR petition does not cause forfeiture. Since the issuance and the finality of the ‘483 final written decision took place only after Google’s filing of the ‘816 IPR petition, the argument based on non-existent preclusive judgement could not have been included in that petition. As such, the CAFC held that Google is allowed to raise its collateral estoppel argument for the first time on appeal.
Collateral estoppel – Identicality requirement
Noting that the collateral estoppel can apply in IPR proceedings, the CAFC recited the four requirements for the preclusive effect to exist under In re Freeman:
(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.
Only the first element was disputed in the present case. Citing its precedents, the CAFC emphasized that the identicality requirement concerns identicality of “the issues of patentability” (emphasis original), rather than the claim language per se. As such, applicability of collateral estoppel is not affected by mere existence of slightly different wording used to depict a substantially identical invention so long as the differences between the patent claims “do not materially alter the question of invalidity,” which is “a legal conclusion based on underlying facts.”
Claim 18 – Invalid for collateral estoppel
The CAFC held that collateral estoppel applies so as to render the claim 18 of the ‘816 patent unpatentable because it shares identical issues of patentability with the invalidated claim 18 of the ’483 patent. Specifically, the CAFC noted that “only difference between the claims is the language describing the number of application servers”: The claim 18 of the ‘816 patent recites “a plurality of application servers” including “first one” and “second one” configured to perform certain respective functions specifically associated therewith, whereas the claim 18 of the ‘483 patent requires “one or more application servers” or “the at least one application server” to perform the requisite functionality. The CAFC found that the difference is immaterial to the question of invalidity in the collateral estoppel analysis, relying on the Board’s factual findings that the above limitation of claim 18 of the ‘816 patent would have been obvious to a skilled artisan, as supported by Google’s expert evidence, which were not challenged by Hammond on appeal.
Claim 14 – Invalid for invalidation of dependent claim 18
Having found claim 18 unpatentable, the CAFC went on to hold that independent claim 14, from which claim 18 depends, is also unpatentable. In so doing, the CAFC noted that the parties had agreed on the invalidity consequence of the parent claim based on the invalidated dependent claim[3]. In a footnote, the Opinion states that since Hammond failed to assert that Google’s collateral estoppel arguments should be limited to the references asserted in the petition, the impact of Google’s original invalidity challenge against claim 14—which does not use the same combination of references as claim 18—was not explored.
Claims 15-17 and 19 – Not unpatentable due to lack of collateral estoppel arguments
The CAFC distinguished the remaining claims from claim 18 and claim 14. Unlike claim 18, Google made no collateral estoppel arguments against claims 15-17 and 19. Rather, Google’s arguments as to these claims relied on the Board’s obviousness findings as to parallel dependent claims. Moreover, unlike claim 14, Hammad did not admit that invalidity of claim 18 is consequential to unpatentability of claims 15-17 and 19. As such, Google failed to meet its burden to provide convincing arguments for reversal on appeal.
Takeaway
This case depicts an interplay between collateral estoppel analysis on appeal and obviousness findings in underlying litigation: The identicality of the issues of patentability exists where the adjudicated and the unadjudicated claims are substantially the same with their only difference being a limitation that has been found as obvious. Parties in parallel actions involving patent claims of the same family may want to be mindful of potential impact of obviousness determination as to a claim limitation unique to one patent but not in the other in the future inquiry of collateral estoppel.
[1] Recited as “the application server is configured to transmit … a request for processing service … to the at least one communication device” in claim 1 of the ‘816 patent.
[2] Recited as “wherein the request for processing service comprises an instruction to present a user of the at least one communication device the voice representation” in claim 1 of the ‘816 patent.
[3] “[T]he patentability of claim 14 rises and falls with claim 18.” During oral argument, this principle was noted referring to Callaway Golf Co. v. Acushnet Co. (Fed. Cir., August 14, 2009).
CAFC splits the difference between VLSI and Intel on Claim Construction
Michael Caridi | December 28, 2022
VLSI Technology LLC v. Intel Corp.
Decided: November 15, 2022
CHEN, BRYSON, and HUGHES. Opinion by Bryson
Summary:
The Court affirmed the PTAB’s claim construction which had narrowed an interpretation taken from the related District Court’s construction and remanded on a separate claim construction for reading a “used for” aspect out of the claim.
Background:
Intel filed three IPR’s against VLSI’s U.S. Patent No. 7,247,552 (“the ’552 patent”). The ’552 patent is directed to the structures of an integrated circuit that reduce the potential for damage to the interconnect layers and dielectric material when the chip is attached to another electronic component. The two representative claims were claim 1 directed to a device and claim 20 directed to a method. The terms subject to construction are emphasized below.
1. An integrated circuit, comprising:
a substrate having active circuitry;
a bond pad over the substrate;
a force region at least under the bond pad characterized by being susceptible to defects due to stress applied to the bond pad;
a stack of interconnect layers, wherein each interconnect layer has a portion in the force region; and
a plurality of interlayer dielectrics separating the interconnect layers of the stack of interconnect layers and having at least one via for interconnecting two of the interconnect layers of the stack of interconnect layers;
wherein at least one interconnect layer of the stack of interconnect layers comprises a functional metal line underlying the bond pad that is not electrically connected to the bond pad and is used for wiring or interconnect to the active circuitry, the at least one interconnect layer of the stack of interconnect layers further comprising dummy metal lines in the portion that is in the force region to obtain a predetermined metal density in the portion that is in the force region.
20. A method of making an integrated circuit having a plurality of bond pads, comprising:
developing a circuit design of the integrated circuit;
developing a layout of the integrated circuit according to the circuit design, wherein the layout comprises a plurality of metal-containing interconnect layers that extend under a first bond pad of the plurality of bond pads, at least a portion of the plurality of metal-containing interconnect layers underlying the first bond pad and not electrically connected to the bond pad as a result of being used for electrical interconnection not directly connected to the bond pad;
modifying the layout by adding dummy metal lines to the plurality of metal-containing interconnect layers to achieve a metal density of at least forty percent for each of the plurality of metal-containing interconnect layers; and
forming the integrated circuit comprising the dummy metal lines.
VLSI had brought suit in the District of Delaware, charging Intel with infringing the ’552 patent. The District court construed the term “force region,” referencing the specification of the ’552 patent to mean a “region within the integrated circuit in which forces are exerted on the interconnect structure when a die attach is performed.” In the IPRs Intel proposed a construction of “force region” that was consistent with that adopted by the district court and VLSI did not oppose Intel’s proposed construction before the Board.
However, in the course of the IPR proceedings it became apparent that they disagreed as to the meaning of the term “die attach” as set forth in the District court construction.
Intel argued that the term “die attach” refers to any method of attaching the chip to another electronic component, and that the term “die attach” therefore includes attachment by a method known as wire bonding. VLSI argued that the term “die attach” refers to a method of attachment known as “flip chip” bonding, and does not include wire bonding.
The construction was paramount to claim 1 as applying its proposed restrictive definition of “die attach,” VLSI distinguished Intel’s principal prior art reference for the “force region” limitation, U.S. Patent Publication No. 2004/0150112 (“Oda”). Oda discloses attaching a chip to another component using wire bonding but not the flip chip process.
The Board sided with Intel that wire bonding is a type of die attach, and that Oda therefore disclosed a “force region”. Specifically, the Board found that the ’552 patent specification made clear in several places that the term “force region” was not limited to flip chip bonding, but could include wire bonding as well. Based on that finding, the Board concluded that Oda disclosed the “force region” element of claim 1 and was unpatentable for obviousness.
Regarding claim 20 of the ’552 patent, the parties disagreed over the construction of the limitation providing that the “metal-containing interconnect layers” are “used for electrical interconnection not directly connected to the bond pad.” VLSI argued that the phrase requires a connection to active circuitry or the capability to carry electricity. Intel argued that the claim does not require that the interconnection actually carry electricity.
The Board again sided with Intel, asserting the principally relied upon U.S. Patent No. 7,102,223 (“Kanaoka”) teaches the “used for electrical interconnection” limitation. The Board cited to figure 45 of Kanaoka for its disclosure of a die that has a series of interconnect layers, some of which are connected to each other.
VLSI appealed.
CAFC Decision:
VLSI argued that the Board erred in its treatment of the “force region” limitation in claim 1 and in construing the phrase “used for electrical interconnection” in claim 20 to encompass a metallic structure that is not connected to active circuitry.
Claim 1
Regarding the “force region” limitation, VLSI argued that the Board failed to acknowledge and give appropriate weight to the district court’s claim construction. In particular, VLSI based its argument principally on the requirement that the Board “consider” prior claim construction determinations by a district court and give such prior constructions appropriate weight.
However, the CAFC found that the Board was clearly well aware of the district court’s construction, as it was the subject of repeated and extensive discussion in the briefing and in the oral hearing before the PTAB. Further, the Court found that the Board did not reject the district court’s construction, but rather the district court’s construction concealed a fundamental disagreement between the parties as to the proper construction of “force region.”
They held that although the district court defined the term “force region” with reference to “die attach” processes, the district court did not decide— and was not asked to decide—whether the term “die attach,” as used in the patent, included wire bonding or was limited to flip chip bonding. Thus, the CAFC found that the Board addressed an argument not made to the district court, and it reached a conclusion not at odds with the conclusion reached by the district court.
In reaching their decision, the Court noted that other language in the specification of the ‘552 patent indicates that the claimed “force region” is not limited to attachment processes that use flip chip bonding. Restating precedence that claims should not be limited “to preferred embodiments or specific examples in the specification,” they emphasized that even if the term “die attach,” was used in one section of the specification to refer to flip chip bonding in particular other portions of the specification did make clear that the invention was not intended to be limited to flip chip bonding.
VLSI further contended that defining “force region” to mean a region at least directly under the bond pad is legally flawed because the definition restates a requirement that is already in the claims. The Court noted that although caselaw has emphasized redundant construction should not be used, in this case intrinsic evidence makes it clear that the “redundant” construction is correct. Specifically, they stated that the “force region” limitation is best understood as containing a definition of the force region, (“… just as would be the case if the language of the limitation had read ‘a region, referred to as a force region, at least under the bond pad . . .’ or ‘a force region, i.e., a region at least under the bond pad . . . .’), and concluded that the language “is best viewed not as redundant, but merely as clumsily drafted.”
Additionally, VLSI argued the Board was bound by the district court’s and the parties’ agreed upon claim construction, regardless of whether the construction to which the parties agree is actually the proper construction of that term, citing the Supreme Court’s decision in SAS Institute v. Iancu, 138 S. Ct. 1348 (2018), and the CAFC’s decisions in Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020), and In re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016).
The Court rejected VLSI’s interpretation of the precedent set by the cases. Instead, they noted that each of these cases in fact stands for the proposition that the petition defines the scope of the IPR proceeding and that the Board must base its decision on arguments that were advanced by a party and to which the opposing party was given a chance to respond. They affirmatively stated that none of the relied upon cases prohibits the Board from construing claims in accordance with its own analysis and may adopt its own claim construction of a disputed claim term. Specifically, as to the case at hand, they noted the parties’ very different understandings of the meaning of the term “die attach,” and that it was clear in the Board proceedings that there was no real agreement on the proper claim construction. They conclude that in such a situation, it was proper for the Board to adopt its own construction of a disputed claim term.
Based thereon, the Court affirmed the claim construction of “force region” and the PTAB’s application of the Oda prior art reference.
Claim 20
Regarding claim 20, VLSI argued that the Board erred in construing the phrase “used for electrical interconnection not directly connected to the bond pad,”. As noted above, the Board had held that this phrase encompasses interconnect layers that are “electrically connected to each other but not electrically connected to the bond pad” or to any other active circuitry. VLSI asserted that under its proposed construction, the Kanaoka reference does not disclose the “used for electrical interconnection” limitation of claim 20, because the metallic layers are connected by the vias only to one another; they do not carry electricity and are not electrically connected to any other components.
The Court agreed with VLSI that the Board’s construction of the phrase “used for electrical interconnection not directly connected to the bond pad” was too broad, noting that two aspects of the claim make this point clear. First, the use of the words “being used for” in the claim imply that some sort of actual use of the metal interconnect layers to carry electricity is required. Second, the recitation of “dummy metal lines” elsewhere in claim 20 implies that the claimed “metal-containing interconnect layers” are capable of carrying electricity; otherwise, there would be no distinction between the dummy metal lines and the rest of the interconnect layer. The Court further noted that the file history of the ’552 patent and amendments made during prosecution provided additional support for this conclusion.
Furthermore, they noted that the phrase “as a result of being used for electrical interconnection not directly to the bond pad” was meant to serve some purpose and should be construed to have some independent meaning, citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”). Thus, they concluded that the words “being used for” imply that the interconnect layers are at least capable of carrying electricity.
The Court therefore remanded the patentability determination of claim 20 to the Board to assess Intel‘s obviousness arguments in light of their new construction of the “used for electrical interconnection” limitation.
Take away
The PTAB is not hamstrung by prior claim construction reached in a District Court action. The Board may construe claims in accordance with its own analysis and may adopt its own claim construction of a disputed claim term.
The recitation of an operational function (“being used for”) in a claim should not be ignored in claim construction. The claim language should be taken as a whole and other aspects of the claim (“dummy metal lines”) which infer an interpretation should be considered.
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