Short Summary
Samsung’s IPR against Chien‑Min Sung’s 9,724,802 patent was decided with claims 1‑9 and 12‑21 found unpatentable. The patent owner now petitions the Director to overturn the Board’s findings, arguing errors in the designated‑profile analysis, ignored expert testimony, and improper priority treatment of Sung ’146.
Detailed Summary
In IPR2024‑00535, the Patent Trial and Appeal Board held that claims 1‑9 and 12‑21 of U.S. Patent No. 9,724,802 are unpatentable, relying on two conflicting “designated profile” theories and treating the Sung ’146 application as anticipatory prior art without a proper limitation‑by‑limitation analysis. Samsung Austin Semiconductor and its affiliates, the petitioners, contend that the Board’s adoption of both a flat‑profile and an average‑height construct violates the intrinsic record and lacks substantial evidence, especially given unrebutted testimony from Dr. Tsai that the referenced Tsai paper does not disclose a pre‑designated profile. Additionally, the Board’s priority ruling improperly forfeits earlier filing dates for the ’802 patent. The patent owner, represented by Alex Chan, seeks Director review and reversal of the final written decision.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before local courts. Understanding the court's reasoning in Samsung Austin Semiconductor, LLC et al. vs Sung, Chien-Min is valuable context for structuring arguments or assessing risk in similar proceedings.
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