Murata Mfg Co Ltd v. Georgia Tech Research Corp

1. Case Identification

• Case #: IPR2025-00384
• 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 and 4-20

2. Patent Overview

• Title: Multi-Band Device and Method with Passives in an Organic Substrate
• Brief Description: The ’914 patent describes multi-band radio frequency (RF) devices, such as low-noise amplifiers (LNAs), containing an active device and passive matching networks. The technology centers on embedding these passive components within a multi-layer organic substrate to reduce the device's form factor.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yeh and Dalmia - Claims 1-2 and 4-20 are obvious over Yeh in view of Dalmia.

• Prior Art Relied Upon: Yeh (Patent 5,995,814) and Dalmia (a 2003 academic thesis).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yeh disclosed the core functional elements of the challenged claims, teaching a multi-band RF low-noise amplifier operable at two distinct frequencies (e.g., 900 MHz and 1.8 GHz). Yeh’s amplifier used a single active device with separate input and output passive matching networks. However, Yeh’s design used discrete passive components. Dalmia, in turn, taught a solution to a known problem in the art: reducing device size by embedding passive components (inductors, capacitors) into an organic-based, multi-layer substrate. Dalmia specifically described this system-on-package technique for RF applications, including LNAs.
  • Motivation to Combine: A POSITA would combine Yeh's multi-band amplifier circuit with Dalmia's packaging technology to achieve the well-known and predictable benefits of miniaturization, cost reduction, and improved performance. Petitioner contended that implementing a known circuit (Yeh) using a known and advantageous fabrication method (Dalmia) was an obvious design choice to solve the persistent problem of decreasing the size of RF devices.
  • Expectation of Success: A POSITA would have had a high expectation of success. The combination involved applying a known packaging solution to a conventional amplifier circuit within the same technical field. Dalmia demonstrated the feasibility of embedding high-quality passives in organic substrates suitable for the frequencies and applications described by Yeh.

Ground 2: Obviousness over Dalmia and Hashemi - Claims 1-2 and 4-20 are obvious over Dalmia in view of Hashemi.

• Prior Art Relied Upon: Dalmia (a 2003 academic thesis) and Hashemi (a 2002 IEEE journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative path to obviousness. Petitioner asserted that Dalmia provided the foundational LNA structure—a single-band amplifier with passive matching networks entirely embedded in a multi-layer organic substrate. Hashemi then supplied the missing multi-band functionality, teaching the specific design principles for modifying conventional single-band LNAs to create "concurrent dual-band" LNAs. Hashemi explained how to design passive networks to provide simultaneous impedance matching at multiple distinct frequencies using a single active device.
  • Motivation to Combine: A POSITA reading Dalmia, which discussed its LNA in a chapter on "multiband applications," would have been motivated to incorporate Hashemi's teachings to achieve true multi-band operation. The motivations were explicit in Hashemi: component reuse, reduced power consumption, and decreased cost and footprint compared to using separate single-band amplifiers. Applying Hashemi's established multi-band design techniques to Dalmia's packaged LNA was a logical step to improve its functionality.
  • Expectation of Success: Success would have been predictable, as it involved applying established RF engineering principles from Hashemi to a standard LNA architecture from Dalmia. Both references operated in the same technical space, and the combination represented a straightforward application of known design evolution in the field.

4. Key Technical Contentions (Beyond Claim Construction)

• Effective Priority Date: A central contention was that the ’914 patent was not entitled to the filing date of its parent application (’313 application). Petitioner argued the parent application lacked written description for the claimed invention because it only disclosed passive filter devices and failed to describe a multi-band device incorporating an active device, a critical element of the challenged claims. Therefore, Petitioner asserted the claims’ effective filing date is no earlier than April 23, 2004. This argument was crucial for establishing that Dalmia (published March 2003) and Hashemi (published January 2002) qualify as prior art under 35 U.S.C. §102(b).

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial on multiple grounds.
  • §325(d): Denial was asserted to be improper because the prior art references and combinations (Yeh, Dalmia, and Hashemi) were never presented to or considered by the Examiner during the original prosecution of the ’914 patent.
  • §314(a) / Fintiv: Petitioner argued that the co-pending district court litigation was in its earliest stages, with the complaint having been recently filed and no scheduling order or discovery underway. As the Final Written Decision in this IPR would issue well before a potential trial, institution would advance efficiency and not be a waste of resources.

6. 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.