Murata Mfg Co Ltd v. Georgia Tech Research Corp

1. Case Identification

• Case #: IPR2025-00383
• Patent #: 7,489,914
• Filed: February 10, 2025
• Petitioner(s): Murata Manufacturing Co., Ltd
• Patent Owner(s): Georgia Tech Research Corporation
• Challenged Claims: 1-2, 4-20

2. Patent Overview

• Title: Multi-Band Components Including Embedded Passives
• Brief Description: The ’914 patent describes multi-band radio frequency (RF) devices, such as low-noise amplifiers (LNAs), that can operate at multiple frequencies using a single active device. The patent focuses on forming passive networks (e.g., matching circuits) with components embedded within a multi-layer organic substrate to reduce device size.

3. Grounds for Unpatentability

Ground 1: Obviousness over Francisco and JP466 - Claims 1-2, 5, 12-20 are obvious over Francisco in view of JP466.

• Prior Art Relied Upon: Francisco (Patent 6,128,508) and JP466 (JP 2001-267466A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Francisco taught the core invention claimed in the ’914 patent: a multi-band RF amplifier (operable as an LNA) using a single active device (a field effect transistor, or FET) with first (input) and second (output) passive networks. These networks provide matching for multiple frequency bands, replacing bulky prior art systems that used separate amplifiers for each band. While Francisco disclosed this circuit architecture, it was silent on the physical implementation. Petitioner asserted that JP466 addressed this implementation detail by teaching the construction of amplifier modules on multi-layer dielectric substrates. JP466 explicitly disclosed forming passive components, such as inductors and capacitors for matching circuits, as patterned conductor layers embedded within the stacked layers of an organic-based substrate to reduce size and improve performance. The combination of Francisco’s circuit with JP466’s physical substrate construction allegedly rendered the key limitations of the independent claims obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) seeking to implement Francisco's space-saving amplifier circuit for a mobile device would combine it with JP466's well-known modular packaging technique. This combination would achieve the predictable benefits of reduced size, improved electrical performance, and lower manufacturing costs, all of which were known advantages of embedding passive components in a multi-layer substrate as taught by JP466.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references described similar amplifier circuits for RF applications. Implementing a known circuit (Francisco) on a common substrate type (JP466) was a routine practice in RF device manufacturing.

Ground 2: Obviousness over Francisco, JP466, and Hirayama - Claims 4 and 6 are obvious over Francisco and JP466 in view of Hirayama.

• Prior Art Relied Upon: Francisco (Patent 6,128,508), JP466 (JP 2001-267466A), and Hirayama (Application # 2002/0118067).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address claims requiring the active device to be a bipolar junction transistor (BJT). Petitioner asserted that while Francisco’s primary embodiment used a FET, the reference was not so limited. Hirayama explicitly taught that for multi-band amplifiers, the active element could be either a BJT or a FET, treating them as known, interchangeable design choices. Hirayama further suggested that a BJT could be selected to achieve high gain.
  • Motivation to Combine: A POSITA, starting with the Francisco-JP466 combination, would be motivated to substitute the FET with a BJT as taught by Hirayama. This was presented as a simple design choice between a limited number of known transistor types to optimize performance characteristics such as gain, linearity, and noise, which are critical figures of merit for an LNA.
  • Expectation of Success: The expectation of success was high because substituting one type of transistor for another was a well-known practice. Hirayama itself stated the components were interchangeable, and any necessary modifications to the matching networks would have been within the skill of a POSITA.

Ground 3: Obviousness over Francisco, JP466, and Okubora - Claims 7-11 are obvious over Francisco and JP466 in view of Okubora.

• Prior Art Relied Upon: Francisco (Patent 6,128,508), JP466 (JP 2001-267466A), and Okubora (European Patent Application EP 1 189 345 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground also built upon the Francisco-JP466 combination to address claims specifying the organic-based substrate comprises liquid crystalline polymer (LCP). JP466 taught using a generic organic resin material. Okubora was introduced to show that LCP was a well-known and preferred organic material for high-frequency substrates due to its superior properties, such as a low dielectric constant and low loss tangent. Okubora disclosed a multi-layer organic substrate for an RF module where LCP was used for the core and insulating layers.
  • Motivation to Combine: A POSITA implementing the amplifier on the organic substrate of Francisco-JP466 would be motivated to use LCP, as taught by Okubora, to improve the performance of the device. Using LCP was a known method to enhance high-frequency characteristics, maintain coating uniformity, provide moisture resistance, and reduce cost. This was argued to be a simple and obvious substitution of one known organic dielectric material for another to achieve predictable benefits.
  • Expectation of Success: A POSITA would have expected success in substituting LCP for the generic organic resin in JP466's substrate, as LCP was a known material for this exact purpose in RF modules, and its electrical properties were well-characterized.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), stating that the primary prior art references (Francisco, JP466, Hirayama) were not cited or considered by the Examiner during the original prosecution of the ’914 patent.
• Petitioner also argued against discretionary denial under Fintiv, asserting that the co-pending district court litigation was in its earliest stages, with only a complaint having been filed. Therefore, a final written decision in the IPR would issue well before any potential trial date, favoring institution to promote efficiency and avoid conflicting outcomes.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-2 and 4-20 of the ’914 patent as unpatentable.