throbber
Trials@uspto.gov Paper 15
`Tel: 571-272-7822 Entered: July 21, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LINEAR TECHNOLOGY CORPORATION,
`Petitioner,
`v.
`IN-DEPTH TEST LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00421
`Patent 6,792,373 B2
`_______________
`
`
`
`Before LINDA M. GAUDETTE, BARRY L. GROSSMAN, and
`PETER P. CHEN, Administrative Patent Judges.
`
`GAUDETTE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`Linear Technology Corporation (“Petitioner”) filed a Petition (Paper
`4, “Pet.”) to institute an inter partes review of claims 1–20 (“the challenged
`claims”) of U.S. Patent No. 6,792,373 B2 (Ex. 1001, “the ’373 patent”). In-
`Depth Test LLC (“Patent Owner”) filed a Preliminary Response (Paper 12,
`“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which
`provides that an inter partes review may not be instituted “unless . . . there is
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`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” Upon consideration of the
`Petition and Patent Owner’s Preliminary Response, we determine Petitioner
`has not established a reasonable likelihood that it would prevail in showing
`the unpatentability of at least one of the challenged claims. Accordingly, the
`Petition is denied under 35 U.S.C. § 314(a) for the reasons that follow.
`
`II. BACKGROUND
`Related Matters
`A.
`Patent Owner filed suit against Petitioner alleging infringement of the
`’373 patent in In-Depth Test LLC v. Linear Tech. Corp., Case No. 1-14-cv-
`01091 (D. Del. Aug. 22, 2014). Paper 9, 1; Paper 5. The ’373 patent is also
`the subject of a co-pending petition for covered business method review:
`Fairchild Semiconductor Corp. v. In-Depth Test LLC, Case CBM2015-
`00060 (PTAB January 13, 2015) (Paper 1). Paper 9, 1.
`B.
`The ’373 patent (Ex. 1001)
`The ’373 patent relates to a test system that executes an enhanced test
`process for testing components, such as semiconductor devices on a wafer,
`circuit boards, packaged devices, or other electrical or optical systems, and
`collecting and analyzing test data. Ex. 1001, Abstract, 3:27–30, 5:18–21.
`Test system 100 includes tester 102 “compris[ing] any test equipment that
`tests components 106 and generates output data relating to
`the testing.” Id. at 3:34–36. Tester 102 operates in conjuction with
`computer system 108 that includes processor 110 and memory 112. Id. at
`3:42–43, 59–60.
`“[T]est system 100 [] uses a predetermined set of initial parameters
`and, if desired, information from the operator to configure the test system
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`100.” Id. at 5:39–41. When the initial configuration process is complete,
`tester 102 “executes [a] test program to apply signals to connections on the
`components 106 and read output test data from the components 106.” Id. at
`6:22–25. “Each test generates at least one result for at least one of []
`components [106].” Id. at 6:32–33.
`[T]ester 102 may[, however,] perform multiple tests on each
`component 106 on a wafer, and each test may be repeated
`several times on the same component 106. Test data from the
`tester 102 is stored for quick access and supplemental analysis
`as the test data is acquired. The data may also be stored in a
`long-term memory for subsequent analysis and use.
`Id. at 6:25–31. Exemplary test results may include both results with
`statistically similar values as well as results that stray from these similar
`values. Id. at 6:33–37. If any of these latter results exceeds an upper or
`lower control limit, the tested component may be classified as a “bad part.”
`Id. at 6:38–40. The ’373 patent describes results that stray from the
`statistically similar values but do not exceed control limits as “outliers.” Id.
`at 6:43–45.
`Computer 108 receives the data file from tester 102 and uses a
`supplementary data analysis element 206 to analyze the data and provide
`enhanced output results Id. at 6:64–66, 9:19–21. Data analysis element 206
`includes outlier classification element 212, which is “configured to identify
`and/or classify the various outliers in the data according to selected
`algorithms.” Id. at 14:7–14. “The outliers in the test results may be
`identified and analyzed for any appropriate purpose, such as to identify
`potentially unreliable components” (id. at 6:45–48), “[f]or example, . . . to
`classify the components 106 into critical/marginal/good part categories” (id.
`at 14:59–61). “The outliers may also be used to identify various potential
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`problems and/or improvements in the test and manufacturing processes.” Id.
`at 6:48–50.
`C. Representative Claims
`Petitioner challenges the patentability of all claims in the ’373 patent,
`claims 1, 8, and 15 of which are independent. See Pet. 1. The independent
`claims are reproduced below:
`1. A test system, comprising:
`a tester configured to test a component and generate test
`data; and
`a computer connected to the tester and configured to
`receive the test data, identify an outlier in the test data, and
`generate an output report including the identified outlier.
`Ex. 1001, 19:23–29.
`
`A data analysis system for semiconductor test data,
`8.
`comprising a computer system, wherein the computer system is
`configured to operate:
`a supplementary data analysis element configured to
`identify outliers in the semiconductor test data; and
`an output element configured to generate an output report
`including the identified outliers.
`Id. at 19:48–20:4.
`15. A method for testing semiconductors, comprising:
`generating test data for multiple components; and
`automatically identifying an outlier in the test data at run
`time using a computer system.
`Id. at 20:29–32.
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`
`D. Evidence Relied Upon
`Petitioner’s patentability challenges are based on the following
`references:
`
`Reference
`Ghaemi
`
`O’Neill
`
`Daasch
`
`Ekstedt
`
`Patent/Printed Publication
`Application of Data Screening to the
`Characterization of Integrated Circuits,
`CAN. J. PHYS., Vol. 67, No. 4, 221–224
`(Apr. 1989)
`US 6,366,108
`
`Variance Reduction Using Wafer
`Patterns in IDDQ Data, Proceedings of
`International Test Conference, 189–198
`(Oct. 3, 2000)
`
`US 5,206,582
`
`Rostoker
`
`US 5,442,282
`
`La
`
`US 5,761,064
`
`Exhibit
`1018
`
`1019
`
`1020
`
`1021
`
`1024
`
`1025
`
`
`In addition to these references, Petitioner relies on the Declaration of
`Adit Singh, Ph. D. (Ex. 1028).
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the ’373 patent claims based
`on the following grounds:
`
`Grounds Reference(s)
` 1
`O’Neill
`
` 2
`
` 3
`
`Claims Challenged
`Basis
`§ 102(a)/(e) 1, 2, 4–9, 11–16, and
`18–20
`2, 9, and 16
`
`O’Neill and Ekstedt § 103(a)
`
`O’Neill and
`
`§ 103(a)
`
`3, 10, and 17
`
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`
`Grounds Reference(s)
`Rostoker
`
`Basis
`
`Claims Challenged
`
`O’Neill and La
`
`§ 103(a)
`
`5, 12, and 20
`
`O’Neill and Daasch § 103(a)
`
`7, 14, and 19
`
`Ekstedt
`
`§ 102(b)
`
`Ekstedt and Ghaemi § 103(a)
`
`1–3, 5, 6, 8–10, 12, 13,
`15–17, 19, and 20
`1, 4, 8, 11, 15, and 18
`
`Ekstedt and
`Rostoker
`Ekstedt and La
`
`§ 103(a)
`
`3, 10, and 17
`
`§ 103(a)
`
`5, 12, and 20
`
`Ekstedt and Daasch § 103(a)
`
`7, 14, and 19
`
` 4
`
` 5
`
` 6
`
` 7
`
` 8
`
` 9
`
` 10
`
`
`
`
`
`III. CLAIM CONSTRUCTION
`
`We interpret the claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`§ 42.100(b); In re Cuozzo Speed Techs., LLC, 2015 WL 4097949, at *6
`(Fed. Cir., July 8, 2015). Under the broadest reasonable interpretation
`standard, claim 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).
`Petitioner and Patent Owner disagree on the scope and meaning of
`various claim terms and phrases. Compare Pet. 14–17 with Prelim. Resp. 5–
`26. For purposes of this decision, we determine the only claim language
`requiring express construction is the term “outlier” (or “outliers”) recited in
`each of independent claims 1, 8, and 15.
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`
`Claims 1, 8, and 15 include the following, similar recitations requiring
`the use of a computer to identify an “outlier” in test data: “a computer . . .
`configured to . . . identify an outlier in [] test data” (claim 1); “a computer
`system . . . configured to operate: a supplementary data analysis element
`configured to identify outliers in [] semiconductor test data” (claim 8); “[a]
`method . . . comprising . . . identifying an outlier in [] test data . . . using a
`computer system” (claim 15). See Section II.C, above.
`Petitioner contends “[t]he term ‘outlier’ should be construed as ‘any
`semiconductor device or part or data point associated with the device or part
`that on some measure falls above or below a threshold value.’” Pet. 14–16
`(quoting Ex. 1028 ¶ 67). Patent Owner contends the term “outlier” should
`be construed as “a test result whose value strays from a set of test results
`having statistically similar values, but does not exceed control limits or
`otherwise fail to be detected.” Prelim. Resp. 5. Patent Owner argues
`Petitioner’s proposed construction is: (1) overly broad, because it
`encompasses components, not just measured data for the components; (2)
`erroneously based on comparisons of measured data to static threshold
`values rather than to a data set; and (3) overly broad in that it encompasses
`measured data that exceeds a device’s control limits and is not limited to
`data that strays statistically from the data set. See id. at 6–10.
`Words in a claim are given their ordinary and accustomed meaning
`unless it appears from the patent that the inventor attached some different
`and/or specific meaning to them. In re Bass, 314 F.3d 575, 577–78 (Fed.
`Cir. 2002).
`As an initial matter, we observe from three of the references relied on
`by Petitioner (Gaehmi, O’Neill, and Daasch) that the term “outlier” has an
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`ordinary and accustomed meaning to those of ordinary skill in the field of
`semiconductor testing,1 namely a data point that is outside a group of data
`points representative of device behavior. See e.g. Ex. 1018, 221, § 1 (“To
`recognize data that are a good representation of device behavior from those
`which are not, one should scan through the data and use common sense and
`engineering judgment. One common and simple method used to scan the
`data is to plot them (for example, by histogram or scatter diagram) and then
`visually inspect the result. Most of the data naturally tend to group into a
`cluster . . ., but some abnormalities may appear. Common abnormalites are
`clusters (a large group of points lying outside the main group . . .) and
`outliers (one or several points lying outside the main group . . .)”); Ex. 1019
`(“As known in the art, an outlier is defined as points outside of the
`distribution of a population.”); Ex. 1020, 2 (observing that a majority of
` 2 plot form a single line and identifying points not
`points on a min-max IddQ
`on the line as outliers).
`The ’373 patent likewise describes typical test results of
`semiconductor components as “a first set of test results having statistically
`similar values and a second set of test results characterized by values that
`stray from the first set.” Ex. 1001, 6:35–37. Unlike Ghaemi (Ex,.1018),
`O’Neill (Ex. 1019), and Daasch (Ex. 1020), however, the ’373 patent further
`
`
`1 The parties agree the invention is, at a minimum, within the field of
`semiconductor testing. See Ex. 1028 ¶¶ 27–35 (indicating semiconductor
`testing is the relevant field of art); Prelim. Resp. 10 (conceding O’Neill and
`Ghaemi are “artisans in the field”).
`2 The quiescent current . . . [(“IddQ”)] is composed primarily of leakage
`current. A defective circuit may draw a significantly larger amount of
`quiescent current than a non-defective circuit.” Ex. 1019, 1:21–24.
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`classifies measured values for components within the second set of test
`results into two groups: (1) values exceeding upper or lower test limits or
`(2) values straying from the first set, but not exceeding control limits or
`otherwise failing to be detected. See id. at 6:37–45. With respect to group
`(1), the ’373 patent states that if a measured value for a component exceeds
`either test limit, a “component may be classified as a ‘bad part’.” With
`respect to group (2), the’373 patent explicitly states: “For the present
`purposes, those test results that stray from the first set but do not exceed the
`control limits or otherwise fail to be detected are referred to as ‘outliers’.”
`Id. at 6:43–45.
`We understand the above-quoted language from column 6, lines 43–
`45, taken in the context of the entire ’373 patent disclosure, in particular,
`column 6, lines 32–50, to explicitly define the term “outlier” as
`encompassing only those measured values straying from test results having
`statistically similar values, and to clearly disavow the full scope of the
`ordinary and customary meaning of “outlier” that would also encompass
`measured values exceeding upper or lower test limits. See Teleflex, Inc. v.
`Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The patentee
`may demonstrate intent to deviate from the ordinary and accustomed
`meaning of a claim term by including in the specification expressions of
`manifest exclusion or restriction, representing a clear disavowal of claim
`scope.”); Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242
`F.3d 1337, 1341 (Fed. Cir. 2001) (“Where the specification makes clear that
`the invention does not include a particular feature, that feature is deemed to
`be outside the reach of the claims of the patent, even though the language of
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`the claims, read without reference to the specification, might be considered
`broad enough to encompass the feature in question.”) .
`Patent Owner tells us that in a prior patent litigation involving the
`’373 patent, the U.S. District Court for the District of Arizona adopted the
`parties’ stipulated claim construction of the term “outlier” as “a test result
`that is within the upper and lower limits of the product's specifications (i.e.,
`a test result that does not indicate a ‘bad’ or ‘out of spec’ part) but
`nevertheless strays from values which are statistically similar” (Ex. 2001, 1).
`Prelim. Resp. 14–15. We find this interpretation of the term “outlier” is
`consistent with the broadest reasonable construction of the claims when read
`in light of the ’373 patent specification. Accordingly, for purposes of this
`decision, we adopt the Arizona district court’s claim construction of the term
`“outlier.”
`
`IV. ANALYSIS
`A. Anticipation of Independent Claim 1, 8, and 15 by O’Neill
`1. O’Neill (Ex. 1019)
`O’Neill is titled, “System and Method for Detecting Defects Within
`an Electrical Circuit by Analyzing Quiescent Current,” and describes “a
`system and method for detecting defects within a complementary metal
`oxide silicon (CMOS) circuit.” Ex. 1019, 1:10–12. In operation, current
`meter 18 supplies current to circuit 14 and a test signal to analyzer 22. Id. at
`4:25–28. Analyzer 22, which is preferably implemented in software and
`stored in memory 30 of computer system 31, detects defects in circuit 14
`based on the test signal. Id. at 4:45–51. More specifically, analyzer 22
`compares the test signal to upper and lower threshold values. Id. at 5:36–38.
`If the test signal is higher or lower than those respective values, analyzer 22
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`identifies the circuit as defective. Id. at 5:38–41. “If a defect is detected,
`then the analyzer 22 preferably indicates via display 35 or printer 36 . . . that
`a defect has been discovered. . . . [T]he defective circuit is preferably
`marked as defective or separated from the other circuits that have not been
`determined to be defective.” Id. at 7:57–64.
`O’Neill defines the upper threshold value as the maximum measured
`test signal value in a defect free state plus an outlier margin value. Id. at
`5:58–59. The lower threshold value is defined similarly as the minimum
`measured test signal value in a defect free state minus an outlier margin
`value. Id. at 5:59–61. O’Neill explains that “the addition and subtraction of
`the outlier margin value allows for small variations to occur which are
`attributable to measurement inaccuracies and/or process variations instead of
`circuit defects.” Id. at 5:65–6:2. O’Neill notes, however, that where these
`calculated threshold values exceed absolute maximum and minimum values
`established by the manufacturing process, test values should be compared to
`the manufacturer’s maximum and minimum values. See id. at 9:1–21.
`According to O’Neill, “the value of the test signal does not actually
`have to be determined in comparing the test signal to the upper and lower
`threshold values. Only a determination as to whether the test signal is
`greater than or less than the threshold values needs to be made.” Id. at 8:25–
`29. O’Neill explains that “[m]aking such a determination is much faster
`than determining the value of the test signal.” Id. at 8:29–31.
`2. Analysis
`Patent Owner contends Petitioner has not met its burden to establish a
`reasonable likelihood that it would prevail in showing O’Neill anticipates at
`least one of the challenged claims, because Petitioner has not identified in
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`O’Neill a description of identifiying a test result which is properly
`characterized as an “outlier” within the meaning of independent claims 1, 8,
`and 15.
` In Section III, above, we determined (for purposes of this decision)
`that the broadest reasonable interpretation of the claim term “outlier” is “a
`test result that is within the upper and lower limits of the product’s
`specifications (i.e., a test result that does not indicate a ‘bad’ or ‘out of spec’
`part) but nevertheless strays from values which are statistically similar.”
`Patent Owner argues O’Neill is concerned solely with identifying defective
`devices and, therefore, only considers whether or not test signals exceed
`threshold test values, but does not identify test results that stray from values
`which are statistically similar, but still within a range of values that are not
`indicative of a bad or out-of-spec part. See Prelim. Resp. 35–37.
`Petitioner contends O’Neill describes an arrangement for identifying
`outliers as claimed, because O’Neill’s computer “will identify those outlier
`test results that stray from the statistically similar sample population of
`values by way of being higher (or lower) than a set threshold value for
`detecting the outliers, but are still below the absolute maximum value set by
`the manufacturer. Pet. 25 (analysis of claim 1); see also id. at 27–28
`(analysis of the corresponding outlier limitations in claims 8 and 15).
`Petitioner’s argument is not supported by O’Neill’s disclosure.
`O’Neill considers both calculated threshold values (i.e., maximum/minimum
`measured test signal values in a defect free state plus/minus an outlier
`margin value (Ex. 1019, 5:58–61)) and the manufacturer’s threshold values
`to determine the narrowest range of minimum to maximum threshold values,
`and then identifies a circuit as defective where a measured value is outside
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`of this narrowest threshold value range. See id. at 4:10–12, 9:1–21. In other
`words, regardless of whether a test result is within the manufacturer’s
`tolerances, O’Neill still identifies a device as defective if it exceeds the
`calculated thresholds. A test result used to identify a device that is bad or
`out of spec is not an “outlier” as we have interpreted that claim term for
`purposes of this decision.
` “It is axiomatic that for anticipation, each and every claim limitation
`must be explicitly or inherently disclosed in the prior art.” In re NTP, INC.,
`654 F.3d 1279, 1302 (Fed. Cir. 2011). We agree with Patent Owner that
`Petitioner has not identified a a description in O’Neill of identifying outliers
`as recited in the claims. Petitioner, therefore, has not met its burden to
`establish a reasonable likelihood that it would prevail in showing at least one
`of challenged independent claims 1, 8, and 15 is anticipated by O’Neill.
`B. Anticipation of Independent Claims 1, 8, and 15 by Ekstedt; and
`Obviousness of Independent Claims 1, 8, and 15 over Ekstedt in
`view of Ghaemi
`1. Ekstedt (Ex. 1021)
`Ekstedt is titled, “Control System for Automated Parametric Test
`Equipment,” and describes a parametric test system controlled by controller
`16, which may be a desktop computer. Ex. 1021, 3:67–68, 4:7–9.
`Controller 16 stores a general test program 24 which calls software
`subroutines from measurement algorithm library 22 to perform specific
`measurements on devices on wafer 15 by controlling measurement
`instruments 10. Id. at 4:7–16, 43–46, 7:58–61. Measurement instruments
`10 output voltage and current signals that relay matrix 12 selectively applies
`to the devices. Id. at 3:43–46. Relay matrix 12 also receives signals
`generated by the devices in response and applies them to measurement
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`instruments 10. Id. at 3:56–60. The subroutines from measurement
`algorithm library 22 “can generate one or more control codes in response to
`the measured parameter to indicate certain types of defects[, f]or example, .
`. . that [a device] is not viable and does not warrant further testing.” Id. at
`9:66–10:3. Further, if a measured parameter is not within desired limits (see
`id., Fig. 10) indicating a defective device, the normal test sequence for that
`device can be terminated and testing can proceed to the next device. Id. at
`11:14–19. “[A] continuously updated report can be provided on an I/O
`device such as a CRT screen 54 or printer to inform the user of the most
`recent measurement results and status information.” Id. at 11:36–39.
`Ekstedt does not use the term “outliers.”
`2. Ghaemi (Ex. 1018)
`Ghaemi is a journal article titled, “Application of data screening to the
`characterization of integrated circuits,” and discloses a data-screening
`method for identifying “the presence of abnormalities (unexpected clusters
`and (or) outliers)” in sets of integrated-circuit test data. Ex. 1018, 221,
`Abstract. According to Ghaemi, the method is “useful when dealing with
`the characterization of devices in a manufacturing environment.” Id. at 224,
`§ 4.
`
`3. Analysis
`a. Anticipation by Ekstedt
`Petitioner contends Ekstedt describes the invention as claimed in
`independent claims 1, 8, and 15, including use of a computer to identify
`outliers in test data, because Ekstedt detects measured results that are outside
`of desired limits. Pet. 34–35; see also id. at 39 (noting the reports generated
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`by Ekstedt include “outlier test results that were measured outside of the
`desired limit).
`In Section III, above, we determined (for purposes of this decision)
`that the broadest reasonable interpretation of the claim term “outlier” is “a
`test result that is within the upper and lower limits of the product’s
`specifications (i.e., a test result that does not indicate a ‘bad’ or ‘out of spec’
`part) but nevertheless strays from values which are statistically similar.”
`We agree with Patent Owner that Petitioner has not identified in
`Ekstedt a description of identifying “outliers” as we have interpreted this
`claim term, because Petitioner relies on Ekstedt’s disclosure of identifying
`test results associated with bad or out of spec devices. See Pet. 34–35, 39.
`Accordingly, Petitioner has not met its burden to establish a reasonable
`likelihood that it would prevail in showing at least one of challenged
`independent claims 1, 8, and 15 is anticipated by Ekstedt.
`b. Obviousness Based on Ekstedt and Ghaemi
`Petitioner contends one of ordinary skill in the art “would have been
`motivated to use the statistical software of Ghaemi to identify an ‘outlier’ in
`the test data obtained by the semiconductor system disclosed by Ekstedt
`because Ekstedt and Ghaemi are both directed to semiconductor testing, and
`both disclose performing statistical analysis of semiconductor test data,” and
`Ghaemi’s method is particularly suited for use with “large amount[s] of
`measurement results that may be transmitted ‘to a database for off-line data
`analysis’ or saved for ‘statistical analysis,’ as disclosed by Ekstedt.” Pet.
`40–41 (citing Ex. 1028 ¶¶ 157–58). Petitioner further contends
`[a] skilled person would [have been] motivated to modify the
`statistical output report generated by Ekstedt to include
`screening for outliers as shown by Ghaemi, as it furthers the
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`objective of Ekstedt of “facilitat[ing] the development of tests
`and improv[ing] the documentation, reusability and
`maintainability of programs for performing testing routines.”
`Further, combining the statistical software of Ekstedt and
`Ghaemi yields the predictable result of identifying outliers in
`the test data obtained by the semiconductor system disclosed by
`Ekstedt.
`Id. at 41 (citing Ex. 1028 ¶¶ 157–58) (internal citations omitted).
`Patent Owner argues Ghaemi “‘identifies the presence of
`
`abnormalities’ such as outliers or clusters, but not outliers themselves”
`(Prelim. Resp. 31 (quoting Ex. 1018, 2–3)), and, at most, groups data so that
`an outlier could be identified by a test engineer, but does not automatically
`identify an outlier using a computer system (id. at 32).
`Petitioner relies on Dr. Singh’s declaration testimony in support of its
`contention that one of ordinary skill in the art would have been motivated to
`modify Ekstedt’s statistical output report “to include screening for outliers as
`shown by Ghaemi.” Pet. 41 (citing Ex. 1028 ¶¶ 157–58). Dr. Singh’s
`opinion regarding motivation to modify Ekstedt is based on Ekstedt’s
`statement that the “invention is concerned with a system for controlling
`automated parametric testers in a manner which facilitates the development
`of tests and improves the documentation, reusability and maintainability of
`programs for performing testing routines” (Ex. 1021, 1:15–20). Ex. 1028 ¶
`157.
`
`As discussed above, in Section IV.C.3.A, Petitioner has not shown
`persuasively that Ekstedt describes identifying an “outlier” as we have
`interpreted this claim term for purposes of this decision. Even assuming
`Petitioner is correct in arguing that Ghaemi discloses identifying outliers as
`claimed, absent from the Petition and the relied-upon paragraphs in Dr.
`
`16
`
`

`
`IPR2015-00421
`Patent 6,792,373 B2
`
`Singh’s deposition testimony is any discussion of why one of ordinary skill
`in the art would have understood from the prior art that screening for
`outliers in Ekstedt’s method would somehow facilitate development of
`Ekstedt’s tests and improve documentation, reusability, and maintainability
`of Ekstedt’s testing programs. See In re Fritch, 972 F.2d 1260, 1266 (Fed.
`Cir. 1992) (“It is impermissible to use the claimed invention as an
`instruction manual or ‘template’ to piece together the teachings of the prior
`art so that the claimed invention is obvious.” (quoting In re Gorman, 933
`F.2d 982, 987 (Fed. Cir. 1991)); In re NTP, Inc., 654 F.3d 1279, 1299 (Fed.
`Cir. 2011)(“Care must be taken to avoid hindsight reconstruction by using
`‘the patent in suit as a guide through the maze of prior art references,
`combining the right references in the right way so as to achieve the result of
`the claims in suit.’” (quoting Grain Processing Corp. v. American-Maize
`Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip
`Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983))).
`Because Petitioner has failed to adequately explain the motivation to
`modify Ekstedt based on Ghaemi to include identification of outliers (i.e.,
`test results that are within the upper and lower limits of the product’s
`specifications such that they do not indicate ‘bad’ or ‘out of spec’ parts, but
`nevertheless stray from values which are statistically similar), Petitioner has
`not met its burden to establish a reasonable likelihood that it would prevail
`in showing at least one of challenged independent claims 1, 8, and 15 would
`have been obvious over Ekstedt and Ghaemi.
`C. Anticipation and Obviousness of the Dependent Claims
`Petitioner’s arguments in support of its challenges as to dependent
`claims 2–7, 9–14, and 16–20 (see Section II.E., above), are based on its
`
`17
`
`

`
`IPR2015-00421
`Patent 6,792,373 B2
`
`contentions that Ekstedt, alone or in combination with Gaehmi, and O’Neill
`disclose systems and methods which include outlier identification as recited
`in independent claims 1, 8, and 15. See generally, Pet. 42–60. In Sections
`IV.A.2 and IV.B.3, above, we concluded Petitioner had not identified
`sufficient evidence to establish that these references disclose identifying
`“outliers” as we have interpreted this claim term for purposes of this
`decision, and, therefore, that Petitioner had not met its burden to establish a
`reasonable likelihood that it would prevail with respect to at least 1 of the
`independent claims challenged in the Petition. For the same reason, we
`determine Petitioner has not met its burden to establish a reasonable
`likelihood that it would prevail with respect to at least 1 of the dependent
`claims challenged in the Petition.
`V. CONCLUSION
`Petitioner has not demonstrated a reasonable likelihood that it would
`prevail in showing unpatentability of claims 1–20 based on the challenges
`advanced in its Petition.
`
`VI. ORDER
`
`For the reasons given, it is
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`18
`
`

`
`IPR2015-00421
`Patent 6,792,373 B2
`
`
`PETITIONER:
`Bernard Knight
`bknight@mwe.com
`
`Kenneth Cheney
`kcheney@mwe.com
`
`PATENT OWNER:
`Joshua Wyde
`jwyde@wydelegal.com
`
`Daniel Noblitt
`dnoblitt@ngtechlaw.com
`
`19

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