US 10090395

I'll search for authoritative records on this patent number.

Key litigation threads are emerging. Let me dig into the claims, the 2022 CAFC outcome, and the apparent cancellation/disclaimer.

Let me get the actual claim language and the appellate/cancellation outcome.

US 10,090,395 B2 — Analyst Summary

Sourcing note: I worked from (a) the full granted text of US 10,090,395 supplied as the authoritative record, and (b) targeted searches of USPTO/PTAB filings and litigation reporting. My search budget was exhausted before I could run a dedicated 2026 CAFC docket query, so the litigation run-down below is not exhaustive. Everything I could not verify directly is flagged as uncertain rather than asserted.

1. Bibliographic data

Priority chain (as recited in the patent itself): continuation of 15/728,002 (2017-10-09) → continuation of 15/251,210 (2016-08-30, now US 9,812,542) → continuation of 15/048,877 (2016-02-19) → continuation of 13/552,556 (2012-07-18, now US 9,425,277) → continuation of 13/022,522 (2011-02-07, now US 8,431,469) → divisional of 12/197,996 (2008-08-25, now US 7,884,003) → divisional of 11/181,217 (2005-07-13, now US 7,462,860) → continuation of 10/217,758 (2002-08-12, now US 7,084,423); related to 10/342,576 (now US 6,833,556).

2. Abstract (as published)

"An electrical device in which an interface layer is disposed in between and in contact with a conductor and a semiconductor."

The abstract is exceptionally terse — it is not representative of claim scope. The substantive disclosure concerns interposing a thin passivating interface layer (nitride, oxide, oxynitride, hydride, fluoride, arsenide, or combinations, optionally with a separate separation/spacer layer) between a metal contact and a silicon-based semiconductor (Si, SiC, SiGe) at a thickness that (i) passivates semiconductor dangling bonds and reduces/eliminates metal-induced gap states (MIGS), thereby depinning the Fermi level, while (ii) remaining thin enough to permit substantial current flow. Claimed/described specific contact resistance values run from ≤2500 Ω-μm² down to ≤1 Ω-μm².

3. Independent claims — plain-language overview

⚠️ Uncertainty disclosure: The authoritative text supplied to me was truncated inside the detailed description, before the claims section. The claim descriptions below are reconstructed from PTAB/IPR petition and expert-declaration excerpts quoting the patent (IPR2020-01207; IPR2020-01282; the later GlobalFoundries petitions) and from the companion patents in the same family. I do not have verbatim claim text for every independent claim, and the numbering/scope statements below should be verified against the USPTO PatentCenter copy before being relied on.

What the record supports:

• Claim 1 — "An electrical junction…" (independent). Recites, in substance: an electrical contact comprising a metal; a semiconductor substrate having a doped region; and an interface layer disposed between and in contact with the contact and the region, the interface layer comprising a metal oxide and a semiconductor oxide (per claim element 1[e] as charted in the GlobalFoundries petition, e.g. "and said interface layer comprising a metal oxide and a semiconductor oxide"). Plain-language: a metal-to-silicon junction with a two-part interfacial oxide — a semiconductor oxide against the silicon and a metal oxide against the metal.

  • Priority finding: In IPR2020-01207 the Board preliminarily found that the pre-2011 priority applications do not describe the genus of "metal oxide" for this purpose, so claims 1–6, 8–10, 15, 16 were held not entitled to pre-2011 priority and Grupp '483 was treated as prior art (institution decision language: "…we find that the pre-2011 priority applications do not describe the recited genus").

• Claim 5 (dependent on claim 1). Adds two functional limitations on the interface layer: (i) a thickness sufficient to depin a Fermi level of the metal electrical contact in the vicinity of the junction, and (ii) yet thin enough that the junction's specific contact resistivity is generally dependent on the metal work function, the semiconductor Fermi energy, or both.

• Claim 6 (dependent on claim 5). Adds a numeric limit: a specific contact resistivity between the metal electrical contact and the region in the semiconductor of less than 10 Ω-μm². (Claims 5 and 6 were among the claims asserted at the Samsung trial, per Acorn's updated mandatory notice in IPR2020-01207.)

• Claim 17 (independent) and claims 17–28. Recite the interface layer "comprising an oxide of titanium and an oxide of the semiconductor." The E.D. Tex. Markman order (Oct. 16, 2020) construed this as "said interface layer comprising a layer of an oxide of titanium and a distinct layer of an oxide of the semiconductor region" — i.e., a two-layer interface (semiconductor-oxide passivation layer + titanium-oxide spacer layer). Claims 23–28 carry the "a semiconductor device" preamble, which the court held not limiting. Priority finding: claims 11–14 and 17–28 were treated as entitled only to a Feb. 19, 2016 priority date because "oxide of titanium" was added by amendment in 2014.

• Claims 29 and 30 (independent). Per the GlobalFoundries expert declaration, these claims require neither "oxide of titanium" nor "metal oxide" and are the only challenged claims said to be entitled to the Aug. 12, 2002 priority date. ⚠️ I could not retrieve their verbatim text; based on the family pattern I believe they are the broadest claims in the set, but I cannot state their exact scope with confidence.

Plain-language bottom line on claim scope: the patent's enforceable core, as litigated, is narrow — a metal/semiconductor junction containing a two-layer interfacial oxide (a semiconductor oxide passivation layer plus a titanium-oxide spacer layer), engineered to a thickness that simultaneously depins the Fermi level and yields a very low specific contact resistivity (claimed at <10 Ω-μm², disclosed down to ≤1 Ω-μm²). The broader "any metal oxide" genus was successfully attacked on written-description/priority grounds in the IPRs.

• Written-description pressure point: The GlobalFoundries petition argues that the only "oxide of titanium" species disclosed anywhere in the '395 patent or its parents is a TiO₂ spacer layer ("Spacer layers may be used with lower barriers (e.g., TiO₂ has a barrier of less than 1 eV)"), and that this lone example cannot support the whole genus of titanium oxides. The examiner had originally objected that the parent applications did not disclose an interface layer containing both a metal oxide and a semiconductor oxide; Acorn overcame that by pointing to the passivation-layer + TiO₂-spacer disclosure.

4. Litigation and PTAB posture (partial)

• Acorn Semi, LLC v. Samsung Electronics Co., Ltd., No. 2:19-cv-00347-JRG (E.D. Tex.), complaint filed 2019-10-23, asserting six related patents including the '395 patent. Jury verdict for Acorn on 2021-05-19; found infringement of claims 17 and 20 of the '395 patent (and claims of the sibling '691 patent); $25 million damages. (Source: Acorn's Updated Mandatory Notice, IPR2020-01207, Ex. 2121.)
• IPR2020-01207 (Samsung v. Acorn Semi) — filed 2020-06-29; instituted 2021-02-10; Final Written Decision 2022-02-09. Grounds were primarily a priority/benefit-disentitlement § 112 attack using Acorn's own Grupp '483 patent as the primary reference.
• IPR2020-01282 (Samsung v. Acorn Semi) — companion IPR; Final Written Decision (Goodnick–Jammy line of art).
• Federal Circuit appeals in 2022, listed on the family record as 22-1499, 22-1539, 22-1541, 22-1542. Reporting on 22-1542 (captioned Samsung v. Acorn Semi) states a voluntary dismissal under FRAP 42(b) with no merits ruling on validity. ⚠️ I was not able to verify the disposition of 22-1499, 22-1539 or 22-1541, nor confirm whether the Board's invalidity or priority findings in the two IPRs were affirmed, vacated, or rendered moot. Treat the "patent survives / patent cancelled" question as open on the material I retrieved.
• IPR2025-00889 (GlobalFoundries v. Oak IP) — listed on the family record as filed and terminated by settlement. Its exhibit list includes items captioned "Certificate of Cancellation for 395 patent" and "Acorn Semi Statutory Disclaimer," alongside the file history of US 10,090,395 and Acorn's infringement contentions. ⚠️ Important, but unverified: if those exhibit captions are accurate as to the '395 patent, they would indicate a statutory disclaimer of all claims under 35 U.S.C. § 253 and a USPTO certificate of cancellation — which would leave the patent with no enforceable claims notwithstanding the 2021 jury verdict. I could not confirm this from the patent's own USPTO status record or a PTAB order in the time available. Do not treat it as established.
• Oak IP, LLC v. GlobalFoundries U.S., Inc., No. 1:25-cv-00142 (D. Del.) — the '395 patent was among the patents in Oak IP's December 2024 acquisition of 36 semiconductor patents from Acorn Semi and among those asserted. (Third-party reporting: GreyB, "December's Patent Transfers Signal Higher NPE Risks for Semiconductors.")

5. Explicit confidence flags

1. High confidence: title, inventors, application number 15/877,837, filing date 2018-01-23, issue date 2018-10-02, priority date 2002-08-12, abstract text, assignment chain, the '395 patent's identity as asserted in Acorn Semi v. Samsung with a $25M 2021 jury verdict, and the existence of IPR2020-01207 / IPR2020-01282 and IPR2025-00889.
2. Medium confidence: the substance of independent claim 1 and of claims 5/6; the Markman construction of the "oxide of titanium and an oxide of the semiconductor" limitation; the Feb. 19, 2016 vs. Feb. 7, 2011 vs. Aug. 12, 2002 priority-date split across claim groups.
3. Low confidence / unresolved: verbatim text of independent claims 29 and 30; the final disposition of the 2022 Federal Circuit appeals; and above all whether the '395 patent has been statutorily disclaimed and cancelled. I found no 2026 CAFC docket activity for US 10,090,395 in the results I retrieved, but my docket search was incomplete — absence of a result here is not evidence of absence.

For a definitive answer on the last two items, the controlling records to pull are: (a) the USPTO PatentCenter "Legal Events" / Patent Application Locating and Monitoring record for 15/877,837, which would list any § 253 disclaimer and the resulting cancellation certificate; and (b) the Federal Circuit dockets for 22-1499, 22-1539, 22-1541 and 22-1542, together with the PTAB Final Written Decisions in IPR2020-01207 and IPR2020-01282.

I'll research the litigation history for US patent 10090395. Let me search multiple sources.

Let me gather more details on the CAFC appeals, the Delaware case, and the 2025 IPR.

Litigation Involving U.S. Patent No. 10,090,395 (US10090395B2)

Patenting info (for grounding): "Method for depinning the Fermi level of a semiconductor at an electrical junction…"; inventors Daniel E. Grupp and Daniel J. Connelly; original assignee Acorn Technologies Inc.; current assignee Oak IP LLC; app. no. 15/877,837; priority date 2002-08-12; granted 2018-10-02; expiration listed as 2022-08-12 (20 years from the 2002 priority date), legal status "Expired – Lifetime."

Below are the proceedings I found that specifically identify US 10,090,395. I did not return results for other, similar patent numbers. Where I could not independently verify a detail, I say so.

1. District Court Litigation

A. Acorn Semi, LLC v. Samsung Electronics Co., Ltd., et al.

• Plaintiff: Acorn Semi, LLC
• Defendants: [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.), Ltd.; Samsung Electronics America, Inc.; Samsung Semiconductor, Inc.; Samsung Austin Semiconductor, LLC
• Jurisdiction: U.S. District Court for the Eastern District of Texas, Marshall Division
• Case No.: 2:19-cv-00347-JRG (Judge Rodney Gilstrap)
• Filed: October 23, 2019
• Patent asserted: U.S. 10,090,395 was one of six Acorn patents asserted in the family (along with U.S. 7,084,423; 8,766,336; 9,209,261; 9,461,167; 9,905,691). Acorn's infringement contentions asserted claims 1–6, 8–9, 11–12, and 14–28 of the '395 patent.
• Outcome / current status:
  • Jury trial commenced May 13, 2021; on May 19, 2021 the jury returned a verdict for Acorn, finding Samsung infringed all asserted claims of the narrowed set — including claims 17 and 20 of the '395 patent — and awarded $25 million as a lump-sum royalty.
  • Acorn's post-trial motion for $6.7 million in attorney fees under 35 U.S.C. § 285 was denied (order dated February 17, 2022; the court found neither side "without blame").
  • The parties settled. On January 6, 2023 the court granted a joint stipulation and dismissed all claims with prejudice, each side bearing its own costs. (Samsung's Federal Circuit appeal of the judgment had been voluntarily dismissed shortly before — see §3.)

Note: The '395 patent is now expired (nominal expiration 2022-08-12), which limits its future asserted life regardless of the settlement.

B. Delaware action (2025)

Google Patents' litigation data flags a US case filed in the Delaware District Court, case 1:25-cv-00142, associated with this patent family. The fetched record lists it as "Critical" but does not name the parties in the excerpt available to me. I could not independently confirm the plaintiff, defendant, or filing date for this Delaware case from the sources I reached. Given the current assignee is Oak IP LLC, it is plausibly an Oak IP enforcement action, but I cannot state that with confidence and do not want to fabricate party names. This should be verified via PACER / the court docket.

2. PTAB (Inter Partes Review) Proceedings

A. Samsung Electronics Co., Ltd. v. Acorn Semi, LLC — IPR2020-01207

• Filed: June 29, 2020
• Institution decision: February 10, 2021
• Patent: 10,090,395 (app. 15/877,837), Tech Center 2800
• Status: Final Written Decision (Paper 49, February 9, 2022) — PTAB gave Samsung a partial win, holding certain challenged claims unpatentable. This is the "Grupp '483" petition.
• The Federal Circuit appeal from this FWD was consolidated as No. 22-1539 (see §3).

B. Samsung Electronics Co., Ltd. v. Acorn Semi, LLC — IPR2020-01282

• Filed: 2020 (petition; a parallel/companion petition to IPR2020-01207)
• Patent: 10,090,395
• Status: Final Written Decision (dated Feb. 9, 2022). This is the "Goodnick–Jammy" petition. Samsung's appeal was consolidated as No. 22-1542 (see §3).

Samsung filed two parallel petitions against the '395 patent and filed a statement on parallel petitions explaining that two were needed because Acorn asserted many claims and because the parties disputed the priority date of certain claims.

C. GLOBALFOUNDRIES Inc. et al. v. OAK IP LLC — IPR2025-00889

• Petitioner: GLOBALFOUNDRIES Inc. et al.
• Patent Owner: OAK IP LLC
• Filed: 2025
• Patent: 10,090,395 (among the exhibits, Ex. 1020 = File History of U.S. Patent No. 10,090,395; Ex. 1105 = "Certificate of Cancellation for 395 patent"; Ex. 1106 = "Acorn Semi Statutory Disclaimer")
• Status: Terminated as a Settlement (per Google Patents' PTAB data).

3. Federal Circuit Appeals (CAFC)

All arising from the Samsung/Acorn dispute and all voluntarily dismissed on January 5, 2023 under FRAP 42(b) (unopposed), with each party bearing its own costs, in connection with the overall settlement:

Effect: The Federal Circuit issued no merits ruling on the validity of US 10,090,395 — the appeals were dismissed procedurally, so the patent retained its presumption of validity. However, as noted, the patent has since expired (nominal 2022-08-12), and the IPR2025-00889 exhibit list references a statutory disclaimer and certificate of cancellation for the '395 patent, indicating certain claims/rights were given up. I could not fully verify the scope of that disclaimer from the available sources.

4. Summary Table of Known Matters Naming US 10,090,395

Caveats (per operating rules)

• I did not auto-correct any identifiers; case numbers are reproduced as found (e.g., E.D. Tex. 2:19-cv-00347-JRG and D. Del. 1:25-cv-00142).
• The "First worldwide family litigation" and a Darts-ip family link also appear on the Google Patents record (family 31495225), but I could not enumerate the specific foreign proceedings from the sources reached.
• I could not verify the parties, filing date, or status of the Delaware 1:25-cv-00142 case, nor the precise scope of the "Certificate of Cancellation / Statutory Disclaimer" for the '395 patent. These should be confirmed directly via PACER/PTAB records rather than assumed.
• Where a search result and the patent text differed, I prioritized the authoritative/fetched record and flagged uncertainty rather than fabricating details.

If you'd like, I can attempt targeted follow-up searches specifically for the Delaware 2025 docket and the IPR2025-00889 documents to fill the two gaps above.

I'll research the three PTAB proceedings identified in the structured data and the related Federal Circuit appeals.

Proceedings overview

Three AIA trial proceedings on file for US 10,090,395 (per the USPTO ODP structured block): two inter partes reviews by Samsung (both instituted, both reaching Final Written Decisions on 2022-02-09) and one 2025 IPR by GlobalFoundries against the current owner Oak IP LLC, which was terminated by pre-institution settlement. Breakdown: 2 claims-invalidated (FWD), 0 active, 0 sustained-outright-across-the-board, 1 settled, 0 institution-denied. Bottom line for a defendant: the broadest claims are dead — the PTAB canceled claims 1–6, 8–10, 15 and 16, and Acorn statutorily disclaimed claim 10 — so the patent is narrowed to a two-layer/oxide-of-titanium claim set (e.g., claims 11, 12, 14, 17–28) that a third party can still attack but with less low-hanging fruit; and, critically, the patent expired 2022-08-12, so any 2025 assertion (Oak IP v. GlobalFoundries, D. Del. 1:25-cv-00142) is a past-damages case at best, with a § 286 window running only from ~2019-02-04 to 2022-08-12.

Caveat up front: the two '395 FWDs issued the same day (2022-02-09) from the same three-judge panel, on parallel Samsung petitions against the same patent. Public secondary sources split the claim-level dispositions between them (both are reported as invalidating claims 1–5 and/or 1–6 plus 8–10). I flag that allocation explicitly below and recommend confirming the exact paper-by-paper verdicts on PTAB E2E before relying on any single claim number.

IPR2020-01207 — Samsung Electronics Co., Ltd. v. Acorn Semi, LLC

• Type: Inter Partes Review (35 U.S.C. §§ 311–319)
• Filed: 2020-06-29 (petition served/asserted alongside Acorn Semi, LLC v. Samsung Electronics Co., No. 2:19-cv-00347-JRG (E.D. Tex.), complaint served 2019-10-24)
• Status: Final Written Decision (per structured data) — FWD issued 2022-02-09; a corrected FWD was later entered (correction table appears in the Federal Circuit appendix at Case 22-1539, Doc. 19, p. 196).
• Judge panel: Brian J. McNamara, John R. Kenny, and Aaron W. Moore, Administrative Patent Judges.
• Petition grounds: challenged claims 1–6, 8–12, and 14–16. Principal ground: § 102 anticipation by Grupp '483 (U.S. Pat. No. 7,176,483) — an Acorn-family Grupp patent — together with § 103 combinations. Samsung also pressed a priority/§ 112 theory (that the challenged claims were not entitled to the benefit of the earlier Acorn priority applications because the priority disclosures did not enable/written-describe the full "specific contact resistivity" range), which, if credited, made Grupp '483 prior art.
• Institution decision: Instituted 2021-02-10 on all challenged claims (Paper 21). The panel declined to exercise § 314(a)/Fintiv discretion to deny in view of the co-pending E.D. Tex. case, on the strength of Samsung's Sotera-style stipulation and the merits.
• Final Written Decision: mixed. Petitioner proved by a preponderance that claims 1–6, 8–10, 15, and 16 are unpatentable; Petitioner did not prove claims 11, 12, and 14 unpatentable. Claim 10 was statutorily disclaimed by Acorn Semi during the proceeding (Ex. 2056) — so its cancellation is the patent owner's doing, not the Board's. Representative FWD language on the enablement/priority fight over the Figure 8 SCR range: "We read the claim language—'interface layer configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω-μm²'—to mean that the claims encompass devices with interface layers that are otherwise within their scope and in which the minimum of the 'Total Current' curve falls between 1 Ω-μm² and zero"; and "Patent Owner had no obligation to optimize, or even practice, the patented inventions, but this evidence does tend to suggest that achieving at least some of the claimed range was not a simple matter of trying various combinations of disclosed materials."
• Settlement / termination: none — this one ran to FWD. (The underlying E.D. Tex. case settled in January 2023.)
• Appeal: covered by the 2022 Acorn/Samsung Federal Circuit appeals (see CAFC note below); no merits disposition verified.
• Defensive value: Claim 1 is canceled — any demand letter or complaint built on claim 1 is dead on arrival and sanction-bait if pressed. Same for claims 2–6, 8–10, 15, 16.

IPR2020-01282 — Samsung Electronics Co., Ltd. v. Acorn Semi, LLC

• Type: Inter Partes Review
• Filed: 2020-07-13 (a parallel/concurrent petition to IPR2020-01207 on the same patent — the "Goodnick-Jammy IPR" in the parties' own nomenclature)
• Status: Final Written Decision (per structured data) — FWD issued 2022-02-09.
• Judge panel: Brian J. McNamara, John R. Kenny, and Aaron W. Moore, APJs (Judge Kenny authored per secondary reporting).
• Petition grounds: challenged claims reported as 1–6, 8–12, and 14–28 (26 claims). Primary art: Goodnick et al., "Effects of a thin SiO₂ layer on the formation of metal-silicon contacts," 18 J. Vac. Sci. & Tech. 949 (1981) (§ 102 anticipation); Taubenblatt 1982; Jammy, U.S. Pat. No. 6,724,088; plus Chang and Kim in the § 103 combinations. All grounds were § 102/§ 103 (IPR is limited to patents/printed publications by § 311(b); the § 112 material came in only via the priority/benefit argument).
• Institution decision: Instituted 2021-02-10 (Paper 20). The institution decision is notable for the § 314(a) fight: after the Board made Sotera Wireless v. Masimo § II.A precedential mid-stream, Samsung broadened its stipulation to forgo in the Acorn litigation any invalidity ground that was raised or could reasonably have been raised in an IPR on patents/printed publications. Acorn called this "unprecedented, procedurally improper, prejudicial," "a midstream change of rules," and "shenanigans [that] violate due process." The panel disagreed, held the factor "strongly favors institution," and instituted. The panel also rejected Acorn's argument that Goodnick's use of "unpinned" meant only dangling-bond passivation, finding "Petitioner has sufficiently shown that Goodnick's Al₂O₃-SiO₂ layer would have reduced the effect of metal-induced gap states."
• Final Written Decision: claims 1–5 and 8–10 unpatentable (Goodnick anticipation, Ground 1); the remaining challenged claims (reported as 6, 11, 12 and 14–28) survived — the Board found no sufficient motivation to combine Goodnick with Taubenblatt 1982, Jammy, Chang, or Kim. Key evidentiary fight: Acorn put in a declaration from Dr. Stephen Goodnick himself, the author of the primary reference, who testified that "We never stated that the 'Al₂O₃ layer' was a layer of Al₂O₃ distinct from SiO₂. The data in Figure 8(b) does not support that claim." The Board ultimately found anticipation notwithstanding, based on what a skilled artisan would have understood. Motions to exclude were denied/denied as moot.
• Settlement / termination: none — ran to FWD.
• Appeal: reported as linked to CAFC No. 2022-1539.
• Defensive value: closes a second independent route (Goodnick/Kirkendall-style MIS contacts) to killing claims 1–5 and 8–10. For a defendant, the important asymmetry is that the surviving claims 11, 12, 14 and 17–28 were tested and survived — an obviousness attack on them requires new art, not a rehash of Goodnick/Taubenblatt.

IPR2025-00889 — GlobalFoundries Inc. et al. v. Oak IP LLC

• Type: Inter Partes Review
• Filed: 2025-05-13
• Status: Settlement (per structured data) — Termination Decision: Pre-DI settlement, 2025-12-04, i.e., the Board terminated before any § 314(b) institution decision (which would have been due ~2025-11-13).
• Judge panel: no panel assigned (no institution decision).
• Petition grounds: not reached. The petition's exhibit list shows the attack was aimed at the surviving claim set and at the prior PTAB record — Exhibits include the '395 file history (Ex. 1020), the Petition and FWD for IPR2020-01207 (Exs. 1089, 1091), the Petition, Institution Decision and FWD for IPR2020-01282 (Exs. 1096–1098), the E.D. Tex. Markman Order (Ex. 1100), Jammy (Ex. 1101), the E.D. Tex. jury verdict and judgment (Exs. 1045, 1093), plus a "Certificate of Cancellation for 395 patent" (Ex. 1105) and an "Acorn Semi Statutory Disclaimer" (Ex. 1106) — the latter consistent with the 2021 disclaimer of claim 10 and/or additional disclaimers I could not verify. TiO₂-focused art (Exs. 1074–1088: Szydlo & Poirier Au/TiO₂ I-V and C-V; Fitzgibbons TiO₂ film properties; Kashiwaya TiO₂ work function; etc.) suggests the 2025 challenge targeted the "oxide of titanium" dependent claims (11–14, 17–28).
• Petitioner counsel: Covington & Burling LLP (Patrick J. Coyne, Neal S. Cohen, Peter Kinsella, Scott E. Holwick). Patent owner counsel: Ascenda Law Group (Tarek Fahmi).
• Institution decision: none (settled before deadline).
• Final Written Decision: none.
• Settlement / termination: terminated 2025-12-04 by pre-institution settlement. Terms are not public (and pre-institution settlements in AIA trials are typically sealed/confidential); the timing aligns with the D. Del. 1:25-cv-00142 assertion against GlobalFoundries.
• Appeal: none.
• Defensive value: zero estoppel attaches. Because § 315(e)(2) estoppel only ripens on a final written decision, a pre-institution settlement leaves GlobalFoundries (and its privies) free to raise in district court any § 102/§ 103 ground on patents and printed publications. Translated for a defendant: the 2025 IPR is a license/settlement artifact, not a validity ruling — it tells you nothing about whether claims 11–28 are valid, but it tells you the owner will settle rather than litigate the PTAB again.

Note on the Federal Circuit appeals (not themselves AIA proceedings)

The structured litigation block lists four CAFC dockets from the 2022 Acorn/Samsung appeals: 22-1499, 22-1539, 22-1541, 22-1542. Samsung's opening brief in No. 2022-1539 was filed 2022-06-24; Acorn's brief in No. 2022-1499 (Dkt. 16, 2022-06-21) framed the appeals as concerning two patents — the '691 and the '395 — and noted Acorn narrowed "to eight claims in four different patents, including claims 6, 8, and 19 of the '691 Patent and claims 17 and 20 of the '395 Patent." Samsung and Acorn settled in January 2023 (Law360, 2023-01-09: "Samsung Settles Acorn Patent Fight After $25M Trial Loss"), and I could not verify a merits disposition in any of the four dockets — the appeals appear to have been resolved/disposed of via the settlement rather than decided. Do not cite these as precedent for anything.

Companion (different patents, same family/accommodation): IPR2020-01206 ('691 patent, Grupp '483 ground, FWD 2022-01-12) and IPR2020-01279 ('691 patent, Goodnick ground, FWD 2022-02-09) — same three-APJ panel. They confirm the pattern but say nothing directly about the '395 claims.

Strategic summary

Which claims are canceled, sustained, or untested. After the 2022-02-09 FWDs plus Acorn's own disclaimer: CANCELED: claims 1–6, 8–10, 15, 16 (claim 10 by statutory disclaimer, the rest by FWD; report the exact per-paper allocation with care given the parallel dispositions). SUSTAINED (challenged and survived): claims 11, 12, 14 (expressly "not shown unpatentable" in IPR2020-01207) and the reported remainder of the 01282 challenge including claims 17–28. UNTESTED on the merits at the PTAB in 2020: claims 7 and 13 (they appear in neither Samsung petition as reported), and claims 29–30 — the two broadly-worded claims tied to the 2002-08-12 priority date — which appear to have been attacked for the first time in the 2025 GlobalFoundries petition that never got instituted. The commercially meaningful surviving set mirrors what Acorn took to trial: claims 17 and 20 (a jury found infringement of claim 17 and claim 20 of the '395 patent; $25M verdict, 2021-05-19).

Estoppel landscape. § 315(e)(2) estoppel binds Samsung Electronics and its privies from raising in litigation any ground raised or reasonably raisable in IPR2020-01207/01282 — and Samsung's own Sotera stipulation went further, agreeing to forgo in the Acorn litigation any § 102/§ 103 ground based on patents or printed publications on the patents that were instituted. That is now academic because Samsung settled in January 2023. For any other defendant — including GlobalFoundries — no estoppel applies at all, because IPR2025-00889 was terminated before institution. Practically, this means: (a) the cancellations of claims 1–6, 8–10, 15, 16 run erga omnes — they are gone for everyone, not just Samsung; (b) all prior-art grounds remain available to a fresh defendant as to the surviving claims, including art that Samsung used unsuccessfully (Goodnick + Taubenblatt/Jammy/Chang/Kim combos) if a new defendant can fix the motivation-to-combine gap the Board found, and including TiO₂-specific art aimed at claims 11–14 and 17–28; (c) no Sotera-type stipulation has been made by anyone else, so § 314(a) discretionary-denial risk is live for the next petitioner.

Pattern signals. Samsung filed a blitz of ten IPRs in June–July 2020 across the Acorn family (IPR2020-01183, -01204, -01205, -01206, -01207, -01279, -01282, and others), including two parallel petitions on this single patent (01207 + 01282) — a deliberate "two bites at the apple" strategy. Acorn litigated aggressively (opposed institution, filed motions to exclude, appealed four dockets to the Federal Circuit in 2022) and won $25M at trial before settling in January 2023. Ownership then migrated Acorn Technologies → Acorn Semi, LLC (2019-06-26) → Oak IP, LLC (2024-12-26), and a new assertion campaign began 2025-02-04 (D. Del. 1:25-cv-00142 against GlobalFoundries), which drew IPR2025-00889 (GlobalFoundries, settled pre-DI) and a further 2025 petition on the sibling '880 patent (IPR2025-01129). The monetization model has shifted from operating-company plaintiff (Acorn, pre-verdict) to IP-holding entity with serial short-window settlements. Two additional structural facts dominate the calculus: the patent expired 2022-08-12 (20 years from the 2002-08-12 priority date; the Board itself noted Acorn's argument about "the limited remaining term of the '395 patent"), meaning no injunctive relief and no ongoing royalties are available — only past damages within the § 286 six-year lookback (i.e., roughly 2019-02-04 through 2022-08-12 for a complaint filed 2025-02-04).

Recommended next steps

1. Pull the two FWDs themselves before drafting anything. Get IPR2020-01207 and IPR2020-01282 from PTAB E2E (https://ptacts.uspto.gov/ptacts/) or the Unified Patents mirrors (https://portal.unifiedpatents.com/ptab/case/IPR2020-01207 and https://portal.unifiedpatents.com/ptab/case/IPR2020-01282) and pin the exact claim-by-claim dispositions, including the corrected FWD and the appendix filed at Case 22-1539, Doc. 19, p. 196 (Federal Circuit appendix; CourtListener: https://www.courtlistener.com/?q=%[222022](/patent/222022)-1539%22). Also confirm whether additional claims were statutorily disclaimed after 2021 — the 2025 record contains an "Acorn Semi Statutory Disclaimer" (Ex. 1106) and a "Certificate of Cancellation for 395 patent" (Ex. 1105) that I could not fully verify.
2. If a demand letter cites claims 1–6, 8–10, 15 or 16 — stop. Those claims are canceled; the FWDs of 2022-02-09 so held (IPR2020-01207: "claims 1–6, 8–10, 15, and 16 are unpatentable"; IPR2020-01282: claims 1–5 and 8–10 unpatentable). Continued assertion of a canceled claim is exactly the conduct that draws Rule 11 exposure.
3. Attack the surviving claims on their own terms. Claims 11, 12, 14 and 17–28 require a metal-oxide separation layer plus a semiconductor-oxide passivation layer — the E.D. Tex. court construed "said interface layer comprising an oxide of titanium and an oxide of the semiconductor" as "a layer of an oxide of titanium and a distinct layer of the oxide of the semiconductor region" (Markman R&R 2020-10-16, adopted 2020-12-10, No. 2:19-cv-00347-JRG). That distinct-layer requirement is where the 01282 defense succeeded against Goodnick and where an invalidity or non-infringement case should be built. TiO₂-specific prior art (the Szydlo & Poirier, Fitzgibbons, Kashiwaya line in the 2025 petition) is the natural § 102/§ 103 vehicle.
4. Lead with the expiration date. The '395 patent's term expired 2022-08-12 (20 years from 2002-08-12; confirm whether any PTA extends it). For any 2025-filed suit, damages are confined to conduct between ~2019-02-04 (six-year § 286 bar) and 2022-08-12, which caps exposure dramatically and eliminates any injunction/ongoing-royalty theory.
5. If there is a live or threatened 2025–2026 assertion, the clock matters. There is no active AIA trial on this patent — IPR2025-00889 terminated pre-institution on 2025-12-04, so no § 315(b) one-year bar has been created by any served complaint against a different party, and no estoppel exists. A new petition would face the standard § 314(b) six-month institution deadline and Fintiv/Sotera discretionary considerations; a § 315(b) bar would run one year from service of any complaint on the new petitioner.
6. Treat the 2025 settlement as a tell, not a ruling. GlobalFoundries walked away before institution; that is evidence the patent owner prefers to license rather than have claims 11–28 tested again — a useful negotiating datum.

Verification honesty: the proceeding list, statuses, assignees, litigation dockets and expiration date are taken verbatim from the structured "PTAB proceedings on file" block and the patent page; the claim-level outcomes, panel names, briefing and settlement facts above are drawn from public PTAB filings and secondary reporting and are flagged where sources conflict or where I could not verify a fact (notably the per-IPR claim allocation between the two 2022 FWDs, the contents of the 2024–2025 disclaimers, and the disposition of CAFC Nos. 22-1499/22-1539/22-1541/22-1542).

I'll research this systematically, starting with the assignment records and litigation history.

Let me dig into the specific assignment records and the Oak IP transfer.

Let me find the specific reel/frame numbers and correspondents on each recorded assignment.

Ownership & Assignment Analysis — US 10,090,395 B2

Patent: US 10,090,395 B2 — "Method for depinning the Fermi level of a semiconductor at an electrical junction and devices incorporating such junctions"
App. 15/877,837 (filed 2018-01-23) · granted 2018-10-02 · priority 2002-08-12 (continuation chain to App. 10/217,758) · anticipated expiration 2022-08-12

Sourcing note / limitation: Reel/frame values below marked "confirmed" are grounded in retrieved primary documents (the § 3.73(c) chain-of-title statement filed by Acorn in IPR2020‑01207, Acorn Ex. 2062; and the Patentcloud 2024‑12‑26 assignment register pull). Several reel/frame values and all assignment‑record "correspondent" fields could not be retrieved in this session — I flag each such gap rather than guess. Assignment-Center keyword searching is also hazardous here: "Acorn" surfaces Acorns Grow Inc. (the Irvine, CA consumer investing app), an unrelated entity with its own recorded assignments.

Inventors

Both are the original inventors of the 2002 priority application (10/217,758) and assigned their rights to Acorn Technologies, Inc. — confirmed in the IPR2020‑01207 chain-of-title statement: "From: GRUPP, DANIEL E.; et al. To: ACORN TECHNOLOGIES, INC. … Reel 022077 Frame 0447."

Unusual patterns: None on the inventor side — no evidence either inventor left within 12 months of filing or held back rights. The notable structural pattern is on the assignee side: over 22 years the family moved from an operating incubator (Acorn Technologies, Inc.) into a licensing vehicle (Acorn Semi, LLC) and then out to a Dominion Harbor assertion LLC (Oak IP, LLC), with a lender security interest running across the middle of the chain.

Original assignee

Acorn Technologies, Inc. — named as assignee on the face of the issued '395 patent (granted 2018‑10‑02).

• Line of business: Semiconductor/telecom technology incubator founded 1998, La Jolla, CA (later 1200 Prospect St., Suite 475, La Jolla per its 2017 power-of-attorney filing). Trial counsel has publicly described it as "an incubator company."
• Product embodying the claims: No evidence of a commercial device shipped by Acorn embodying the '395 claims. Acorn's monetization model was patent licensing and enforcement through its subsidiary Acorn Semi, LLC, not volume semiconductor manufacturing. On this record the original assignee is best characterized as a non‑practicing licensing/incubation entity, not a product company.
• Current status: Appears extant (it appears as a party to the 2024‑12‑26 secured-party release). Its affiliate Acorn Semi, LLC sold the 36‑patent family to Oak IP LLC on 2024‑12‑26. No bankruptcy, receivership, or Chapter 7/11 filing was found.

Assignment timeline

(1) Inventor → operating company

• Date not retrieved / recorded date not confirmed — Reel 022077/0447 (confirmed reel/frame)
  • Conveyance: Assignment (inventor assignment of entire interest)
  • Assignor: Grupp, Daniel E.; Connelly, Daniel J. ("et al.")
  • Assignee: Acorn Technologies, Inc.
  • Correspondent: Not retrieved.
  • Context: Foundational inventor assignment; reel series 022xxx indicates recording c. 2008–2009 (later than the 2002 filing).

(2) Operating company → licensing subsidiary

• Executed c. 2019 / recorded 2019-06-26 — Reel 049602/0324 (confirmed reel/frame; recording date per Google Patents legal events)
  • Conveyance: Assignment of interest
  • Assignor: Acorn Technologies, Inc.
  • Assignee: Acorn Semi, LLC
  • Correspondent: Not retrieved.
  • Context: Internal reorganization — transfer into Acorn's dedicated licensing/enforcement vehicle, executed months before Acorn Semi sued Samsung.

(3) Collateral / securitization

• Executed c. 2019-05 / recorded 2019-05-30 — Reel/frame not retrieved
  • Conveyance: Security interest (see Google Patents: "SECURITY INTEREST (SEE DOCUMENT FOR DETAILS)")
  • Assignor: Acorn Semi, LLC
  • Assignee: The Peter Norton Living Trust dated April 28, 1989
  • Correspondent: Not retrieved.
  • Context: Securitization — the family pledge as loan collateral, ~1 month before the entity reorganization and ~3 months before the Samsung suit.

(4) Transfer to asserter

• Executed 2024-12-26 / recorded 2024-12-26 — Reel 69681/0837 (confirmed; reported as "69681‑837")
  • Conveyance: Assignment of interest — 36 U.S. patents conveyed in a single recordation
  • Assignor: Acorn Semi LLC
  • Assignee: Oak IP LLC (812 W. McDermott Dr. #1026, Allen, TX 75013)
  • Correspondent: Not retrieved.
  • Context: Fire-sale/transfer-to-asserter — outright portfolio sale to a Dominion Harbor assertion entity. Note: the '395 had already expired 2022‑08‑12, so this acquisition is enforceable only for pre-expiration back damages.

(5) & (6) Releases of the securitization

• Executed 2024-12-26 / recorded 2024-12-26 — Reel/frame not retrieved (two separate recordings)
  • Conveyance: Release by secured party
  • Assignor: The Peter Norton Living Trust
  • Assignee: Acorn Semi, LLC (one record) and Acorn Technologies, Inc. (second record)
  • Correspondent: Not retrieved.
  • Context: Securitization unwound contemporaneously with the Oak IP sale — i.e., the lender's collateral lien was cleared as part of the closing.

No Assignment Center record was retrieved for the Peter Norton security interest or the two 2024 releases — their reel/frame and correspondent fields remain unverified, and the Google Patents legal-events tab reports them without reel/frame detail.

Timeline diagram

timeline
    title Ownership of US 10090395
    2002 : Priority filing by Acorn Technologies
    2008 : Inventor assignment recorded
    2019 : Acorn Technologies to Acorn Semi LLC
         : Security interest to Peter Norton Trust
         : Samsung suit filed in EDTX
    2021 : 25M dollar jury verdict vs Samsung
    2022 : Patent term expires
         : PTAB final written decision
    2023 : Samsung settlement
    2024 : Oak IP acquires 36 patent portfolio
    2025 : Oak IP sues GlobalFoundries
         : Unified Patents IPR filed

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT.
Reel 69681/0837 (recorded 2024-12-26) conveys the patent (with 35 others) from Acorn Semi LLC to Oak IP LLC. In its own PTAB mandatory notice (IPR2025‑01129), Oak IP LLC states it is "a wholly-owned subsidiary of Monument Patent Holdings, LLC, which is a wholly-owned subsidiary of Dominion Harbor Enterprises, LLC," with a place of business at 812 W. McDermott Dr. #1026, Allen, TX 75013 — a unit-numbered mail-drop style address, no manufacturing footprint, no products. The 2019 Acorn Technologies, Inc. → Acorn Semi, LLC transfer (Reel 049602/0324, recorded 2019‑06‑26) is the earlier structural step that moved the family from an incubator into a pure licensing vehicle.

2. Known asserter in the chain — PRESENT.
Current assignee Oak IP LLC / Dominion Harbor Enterprises is a high-frequency patent plaintiff, surfaced by Unified Patents — the same defensive aggregator lists PTAB cases IPR2025‑00889 (settled) and IPR2025‑01129 against Oak IP, and Oak IP filed Oak IP LLC v. GlobalFoundries Inc. et al., 1:25-cv-00142 (D. Del., 2025‑02‑04). It is not on the enumerated list (Acacia, Marathon, IV, Wi‑LAN, Round Rock, etc.), but qualifies under the "surfaced by Unified Patents or RPX as a high-frequency plaintiff" clause.

3. Repeat correspondent across the chain — UNCLEAR / not verified.
The assignment-record correspondent field could not be retrieved for any link. What is on the record are recurring prosecution/litigation representatives, not assignment recorders: Tarek N. Fahmi (Customer No. 27571) — Acorn Technologies' attorney of record under a 2017 general POA and filer (with Sarah Zizzo) of the '395 statutory disclaimer; and Matthew C. Phillips, Reg. No. 43,403, Laurence & Phillips IP Law — Acorn Semi's IPR lead counsel. A single appearance is not a finding, and none of these is tied to a specific assignment reel in the records I retrieved. Not scored as present.

4. Cascading transfers — NOT PRESENT as defined.
The two ownership transfers are 2019‑06‑26 (049602/0324) and 2024‑12‑26 (69681/0837) — ~5.5 years apart, so no <24‑month chain of LLC-to-LLC hops. Partial flag: three separate recordings were all dated 2024‑12‑26 (assignment to Oak IP plus two secured-party releases), indicating a single bundled closing rather than an organic chain.

5. Pre-litigation transfer — PRESENT.
The family was moved into Acorn Semi, LLC by assignment recorded 2019‑06‑26 (Reel 049602/0324), and Acorn Semi, LLC is the named plaintiff in Acorn Semi, LLC v. Samsung Electronics Co., Ltd. et al., No. 2:19-cv-00347-JRG (E.D. Tex.) — a 2019‑filed case that produced the 2021‑05‑19 jury verdict of $25,000,000, with claims 17 and 20 of the '395 patent found infringed. The transfer-to-plaintiff immediately preceded the suit; the exact complaint filing date was not pinned down in this session, but the docket year (2019) places it within months of the June 2019 assignment.

6. Bankruptcy fire-sale — NOT PRESENT.
No bankruptcy of Acorn Technologies, Inc. or Acorn Semi, LLC was found. The 2024‑12‑26 sale is a negotiated portfolio divestiture to Dominion Harbor, not a court-supervised asset sale.

7. Privateering — NOT PRESENT / UNCLEAR.
No evidence that Acorn is a practicing operating company using Oak IP as a proxy to attack competitors. The 2024 transaction reads as an outright sale of the portfolio to Dominion Harbor's Oak IP, and the earlier Acorn Technologies → Acorn Semi → sue Samsung phase was in‑house monetization by the patent owner itself.

8. Defensive aggregator (anti-NPE) — NOT PRESENT.
The chain ends at Oak IP LLC, an assertion entity, not at RPX, AST, LOT, Unified Patents, or OIN. The inverse is true: Unified Patents (a defensive aggregator) is on the challenger side, having filed PTAB petitions (IPR2025‑00889, IPR2025‑01129) against Oak IP's portfolio — i.e., this patent is being neutralized by a defensive aggregator, not sheltered by one.

Verdict

NPE — high confidence.

Three independently grounded signals drive this: (i) the 2024‑12‑26 transfer at Reel 69681/0837 from Acorn Semi LLC to Oak IP LLC, a three-tier Dominion Harbor subsidiary operating from a unit-numbered Allen, TX mail-drop address with no products (confirmed by Oak IP's own RPI statement in IPR2025‑01129); (ii) pre-litigation positioning — the family was shifted into Acorn Semi, LLC by assignment recorded 2019‑06‑26 (Reel 049602/0324) and Acorn Semi then won a $25M verdict against Samsung on claims 17 and 20 of the '395 in 2:19-cv-00347-JRG (verdict 2021‑05‑19); and (iii) Dominion Harbor's status as a repeat, Unified-Patents-tracked patent plaintiff, with suit filed against GlobalFoundries on 2025‑02‑04 within ~5 weeks of the acquisition. The finding is reinforced — not merely suggested — by the fact that Oak IP acquired the '395 after its 2022‑08‑12 expiration, i.e., purely as a back-damages asset.

Caveat: the verdict does not rest on the entity names alone; it rests on the confirmed reel/frame transfers, the Dominion Harbor parentage admitted by Oak IP, and the litigation timeline. The one material gap is that no assignment-record correspondent was retrievable, so the classic "same lawyer behind every shell" test could not be run — that gap should be closed by pulling the reel images directly before this is used in any filing.

Verification links:

• USPTO Assignment Center (search "10090395"): https://assignmentcenter.uspto.gov/
• Legacy assignment index: https://assignment.uspto.gov/patent/index.html
• Google Patents (legal events / family litigation): https://patents.google.com/patent/US10090395/en
• Unified Patents litigation data (1:25-cv-00142; 2:19-cv-00347; IPR2025-00889; IPR2020-01207): https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1%3A25-cv-00142

I'll research US patent 10090395 and its cited prior art.

Prior-Art Analysis — US Patent No. 10,090,395

Strict-note on identifiers: All numbers below are reproduced literally as found. Where I could not verify an item against the primary front page of US 10,090,395 itself, I say so explicitly rather than asserting it.

1. Patent Identification (as confirmed by the record)

The ’395 patent has been litigated extensively (Delaware 1:25-cv-00142; E.D. Tex. 2:19-cv-00347; PTAB IPR2020-01207 and IPR2020-01282; Federal Circuit appeals 22-1499, -1539, -1541, -1542; and recently IPR2025-00889), which is why a substantial, well-documented prior-art record exists for it.

2. The Single Most Relevant Reference (Affirmed Anticipatory Art)

U.S. Patent No. 7,176,483 B2 — “Grupp ’483”

• Full citation: D. E. Grupp et al., U.S. Patent No. 7,176,483 B2, titled Method for depinning the Fermi level of a semiconductor at an electrical junction and devices incorporating such junctions; issued Feb. 13, 2007.
• Filing/priority: Same family as the ’395 patent; Grupp ’483 is a family member claiming priority to app. 10/217,758 (filed Aug. 12, 2002).
• Brief description: Discloses essentially the same specification as the ’395 patent — a metal–interface-layer–semiconductor junction in which the interface layer passivates the semiconductor surface and displaces the metal sufficiently to depin the Fermi level, comprising a passivation layer (which may be a semiconductor oxide) plus an optional separation layer (which may be a metal oxide such as titanium dioxide), with the interface in contact with a semiconductor region and a metal contact.
• Claims potentially anticipated under § 102: In IPR2020-01207, the PTAB found Grupp ’483 anticipates claims 1–6, 8–10, 15, and 16 of the ’395 patent. The Board also found Grupp ’483 anticipative of claims 9 and 10, and separately found claim 6 not entitled to the priority applications’ filing dates (lack of enablement for resistances “down to zero”), making Grupp ’483 prior art as to claim 6. Claims 11, 12, and 14 (the “comprising an oxide of titanium” dependent claims) were found not proven anticipated because Patent Owner was entitled to the earlier priority date for those claims. Ground: § 102(b) (with Petitioner also asserting § 102(a)(1) as to claim 6).

This is the reference that answers the question directly: for the ’395 patent, the most relevant anticipatory prior art is Grupp ’483, not any third-party document.

3. Remaining Cited Patent References

Verification caveat: I was not able to pull the exact front-page “References Cited” block of US 10,090,395 from a primary source in this session. The list below is drawn from (a) the Unified Patents “Patent Art” table for US-10090395-B2 and (b) the front page of the same-specification family member US 7,884,003 B2 (confirmed via the patent PDF). Treat the claim-anticipation attributions as classification guidance, not as adjudicated findings — none of the third-party references below were found to be anticipatory in the IPR; they are § 102(a)/(b)/(e) or § 103 art.

3A. Same-family references (self-citations / co-pending)

3B. Third-party U.S. patents / publications

(Some entries above appear in the Unified Patents “Patent Art (93)” list and/or the US 7,884,003 front page; item-level descriptions are condensed and should be confirmed against each document’s front page before being relied on in a filing.)

4. Cited Non-Patent Literature

5. Bottom Line and Important Caveats

1. The reference that actually anticipates under § 102 is Grupp ’483 (U.S. 7,176,483), an Acorn-family patent, not an outside party. The PTAB in IPR2020-01207 found it anticipatory of claims 1–6, 8–10, 15, and 16 (plus 9 and 10 separately); claims 11, 12, and 14 survived only because Patent Owner retained the earlier priority date for those (they recite “comprising an oxide of titanium”).
2. None of the third-party references (§ 3B) were adjudicated as anticipatory. They are, at most, § 102(a)/(b)/(e) element-level art or § 103 combination art; I have not verified a single one against a full claim chart, and I am flagging that explicitly rather than overstating the § 102 mapping.
3. Verification gap: I could not retrieve the exact front-page “References Cited” block of US 10,090,395 itself in this session. The § 3 list is reconstructed from the Unified Patents patent-art table for US-10090395-B2 and the confirmed front page of the same-specification family member US 7,884,003 B2. If you need the authoritative citation list, pull the ’395 front page directly from USPTO PatentCenter or the Google Patents PDF (https://patents.google.com/patent/US10090395/en).
4. Do not auto-correct any of the above numbers — several (e.g., US 7,176,483 vs. US 7,176,503) are close and easily confused; each is reproduced as it appears in the record.

If you want, I can build a claim-by-claim § 102 chart for Grupp ’483 against the ’395 claims 1–6, 8–10, 15, and 16 from the IPR final written decision.

I'll research the prior art record for this patent and the IPR grounds, since the fetched page text does not itself include a standardized "Prior Art" / "References Cited" section.

Let me get the specific grounds, claim language, and the key references.

Let me pull the actual claim set of the '395 patent and the specific IPR ground structures.

Obviousness Analysis — U.S. Patent No. 10,090,395 under 35 U.S.C. § 103

0. Threshold note on the evidentiary basis (please read first)

The task directs me to "use the results from the Prior Art section of this page." The authoritative fetched record for https://patents.google.com/patent/[US10090395](/patent/US10090395)/en that I was given does not contain a rendered "Prior Art" / "References Cited" table — the fetch terminates at the end of the Detailed Description (mid-sentence, at "…the metal used for the"), before the claims and before Google Patents' "Patent Citations," "Cited By," and "Similar Documents" tables. I therefore cannot reproduce a formal front-page reference list from that page.

Instead, I grounded this analysis on the prior art of record actually applied against this exact patent in the parallel proceedings (PTAB IPR2020-01207 and IPR2020-01282, and the E.D. Tex. invalidity contentions), plus the references the '395 patent cites in its own background. I flag this substitution explicitly because it changes the provenance of every reference below. I did not auto-correct or silently substitute any identifier.

1. The claim framework — what a § 103 combination must teach

Claims 1–30. The independent claims, as reproduced in the PTAB and litigation record:

Claim 1 (apparatus, the "metal oxide + semiconductor oxide" genus claim):

"An electrical junction, comprising a region in a semiconductor substrate, a metal electrical contact to said region, and an interface layer between said region and said metal electrical contact, said region being electrically connected to said metal electrical contact through said interface layer and said interface layer comprising a metal oxide and a semiconductor oxide, and being in contact with said region in the semiconductor substrate and said metal electrical contact."

This is a structural, two-material, three-layer claim: (semiconductor region) — (interface layer containing a metal oxide and a semiconductor oxide) — (metal contact), with the region electrically connected through the interface layer.

Claim 25 (the contact-resistivity genus claim):

"An electrical junction comprising an interface layer disposed between a contact metal and a semiconductor, the semiconductor comprising a source or drain of a transistor, the interface layer comprising a metal oxide separation layer and a semiconductor oxide passivation layer and configured to provide a specific contact resistivity between the contact metal and the semiconductor of less than 1 Ω·μm²."

Dependents of note:

Key claim-construction fact (E.D. Tex. Markman order, Oct. 16, 2020, applied in IPR2020-01207):

• "interface layer" → plain and ordinary meaning (all claims 1–30);
• "said interface layer comprising an oxide of titanium and an oxide of the semiconductor" (claims 17–28) → "said interface layer comprising a layer of an oxide of titanium and a distinct layer of an oxide of the semiconductor region" — i.e., distinct, not intermixed, strata.
• "a semiconductor device" (claims 23–28 preamble) → not limiting.

That "distinct layer" construction is the pivot on which most of the obviousness fight turned. Any § 103 ground targeting claims 17–28 must show a reference teaching or suggesting two distinct oxide strata, not a single mixed Al-Si-O layer.

Priority-date exposure (this drives which art is available): Samsung successfully argued that the "metal oxide" genus claims are not entitled to the pre-2011 priority applications for lack of written description (§ 112 ¶ 1 under pre-AIA), which is what allowed Acorn's own earlier Grupp publication to qualify as § 102(b) prior art. Recorded priority tiers:

Claim 10 was disclaimed by the patent owner before institution (Ex. 2056), and the Board corrected its FWD accordingly.

2. The prior art references of record

3. Obviousness grounds, combination by combination

Ground A — Grupp '483, alone or with a metal-oxide secondary reference (targets claims 1–6, 8–9, 15, 16)

The combination: Grupp '483 (the applicant's own earlier disclosure) + any one of Jammy, Goodnick, or the TiO₂ art.

Why it is obvious: The Board found Grupp '483 anticipates claims 1–6, 8, 9, 15, 16 (IPR2020-01207 FWD, Paper 49, Feb. 9, 2022) — so under § 103 the same reference necessarily renders them obvious (In re Kalm, In re Fracalossi; anticipation is the epitome of obviousness). Grupp '483 and the '395 patent share the same specification; Acorn conceded this in its own filings ("Acorn cannot argue that the disclosure of Grupp '483 is deficient because it has the same specification as the challenged patents"). The only thing separating the '395 claims from Grupp '483 is the effective filing date, not the disclosure. Motivation to combine is therefore moot for these claims — there is nothing left to combine.

Note: This is a self-collision ground. It is available only because the Board found the priority break (lack of written description in the pre-2011 parents for the generic "metal oxide" genus — Acorn's parents disclosed essentially a single species, TiO₂, plus a bare generic mention of "an oxide," which the Board preliminarily agreed could not support the genus). If the priority date is sustained, Grupp '483 drops out entirely and Ground A collapses.

Ground B — Goodnick in view of Taubenblatt 1982 (and Taubenblatt 1984) (targets claims 1–5, 8–9)

The combination: Goodnick (Al/SiO₂/Si; Al₂O₃ + SiO₂ coexisting at the interface) + Taubenblatt 1982/1984 (express teaching that an interfacial SiO₂ lowers the Si-metal barrier).

Why a POSITA would combine them:

1. Same field, same problem. Both references address the electrical behavior of metal–silicon contacts and the effect of a thin interfacial oxide on barrier height. Goodnick explicitly frames the work as understanding "the formation of metal-silicon contacts" — the identical field of the '395 patent's stated problem (pinning of the Fermi level at a metal-semiconductor junction).
2. Express, articulated motivation. Taubenblatt is not a silent-anticipation reference; it states the advantage the '395 patent claims as its object (barrier reduction via an interfacial oxide). That is the definition of a reason to combine: the secondary reference supplies the recognized benefit of the very structure the primary reference discloses.
3. Reasonable expectation of success. Goodnick reports that the Al₂O₃ formation is self-limiting — the reaction stops because the Al₂O₃ acts as a diffusion barrier. A POSITA would expect that this self-limiting behavior naturally yields a thin, controllable oxide interlayer (exactly the 0.1–5 nm of claim 2), and Simmons' known tunneling model (Generalized Formula for the Electric Tunnel Effect Between Similar Electrodes Separated by a Thin Insulating Film, J. Appl. Phys. 34(6) (1963), cited of record) allowed the artisan to predict that conduction would be tunneling-limited as thickness grows. There is no unpredictability that would defeat a reasonable expectation of success — the only trade-off is the well-understood optimum thickness curve the '395 patent itself reproduces in FIG. 8.
4. KSR principles. KSR Int'l v. Teleflex, 550 U.S. 398 (2007): known technique (thin interfacial dielectric in a metal-semiconductor contact), improving a known device in the same way, with predictable results → obvious. The combination is the "simple substitution of one known element for another."

The key vulnerability of Ground B: the Board in IPR2020-01282 declined to find Goodnick's Al₂O₃ and SiO₂ to be distinct layers in the sense of the Markman construction, and Goodnick himself declared that a POSITA reading his paper would not understand the "Al₂O₃ layer" to be the stratified distinct-layer structure shown in Samsung's diagrams (Goodnick Declaration ¶¶ 11–13: the Al₂O₃-diffusion-barrier explanation was "just a guess," a "speculation"). That evidentiary concession is why Ground B alone did not carry claims 17–28.

Ground C — Goodnick + Taubenblatt 1982 + Jammy (targets the "distinct layer" claims, e.g., 17–28)

The combination: Add Jammy.

Why a POSITA would add Jammy:

1. Jammy cures the exact deficiency of Goodnick — it teaches or suggests distinct oxide strata by an express process sequence: (a) grow/have a pre-existing thin SiO₂ on the Si source/drain; (b) HF-clean that removes only some of the oxide, leaving a residual SiO₂ layer; (c) deposit the metal oxide (Al₂O₃) by CVD on top of the residual oxide. The result is literally "a layer of an oxide of [the metal] and a distinct layer of an oxide of the semiconductor region" — the Markman construction verbatim.
2. Jammy comes from the same field and states the same purpose. Jammy's "quantum conductive barrier" is a thin oxide between a metal stud and a silicon source/drain intentionally designed to reduce contact resistance — the '395 patent's stated objective ("conventional metal-oxide-semiconductor field effect transistor… to reduce contact resistance"). A POSITA seeking to commercialize the Goodnick/Taubenblatt insight in a CMOS source/drain would look exactly to Jammy-type integration.
3. Wired-together motivations, not hindsight. Jammy supplies (i) the metal oxide (alumina, and other ceramic oxides by name), (ii) the metal contact (tungsten, claim 16), (iii) the source/drain context (claim 25's "source or drain of a transistor"), and (iv) the residual-semiconductor-oxide layer (claims 8–9, 12, 17–28). Each limitation is met by an express disclosure, not by inference.

Samsung's actual Grounds 4–8 in IPR2020-01282 were structured in precisely this layered way: Goodnick + Taubenblatt 1982 + Jammy (Ground 5), + Chang (Ground 6), + Kim (Grounds 7–8) — with a dedicated Motivation to Combine section for each pair. That is the model combination chain a petitioner would use.

Outcome: the Board nonetheless held claims 6, 11–12, and 14–28 not unpatentable in IPR2020-01282, and claims 11, 12, and 14 not unpatentable in IPR2020-01207. The surviving claims all require "oxide of titanium" (claims 11–14, 17–28) or were otherwise read narrowly. Neither Goodnick (Al₂O₃) nor Jammy (Al₂O₃/SiON) discloses titanium oxide. That is a genuine gap in the record as litigated.

Ground D — Ground C + a TiO₂-recognizing reference (targets claims 11–14 and 17–28)

The combination: Goodnick + Taubenblatt 1982 + Jammy + Szydlo 1980 (Au/TiO₂ Schottky diodes) or an equivalent TiO₂ MIS reference.

Why a POSITA would substitute/select TiO₂:

1. TiO₂ was a known, enumerated option. Szydlo (1980) had characterized metal/TiO₂ junctions, and the '395 patent's own family (including U.S. 10,147,798 and the '423 parent) states that TiO₂ "is found to present only a very small barrier to electron flow between a metal and an n-type semiconductor, such as Si or Ge, of the order of zero to 0.15 electron volts." Selecting TiO₂ from the class of known metal oxides for the separation layer is a design choice among a finite, identified set of known materials with predictable properties — obvious under KSR and In re Applied Materials.
2. Downstream selection is a recognized technique. Once Jammy has taught the metal-oxide architecture, choosing a lower-barrier metal oxide (TiO₂, or the named zirconia/yttria options in Jammy) to further reduce SCR is the ordinary optimization an engineer would perform, particularly where Iwaguro teaches that the interface layer can cut SCR by ≥ 100× (motivating the drive toward the claimed "less than 1 Ω·μm²").
3. The tungsten/titanium contact limitations (claims 15, 16, 21, 30). Jammy expressly names tungsten studs; titanium is the conventional n-Si contact metal of the same period and appears as the Contact metal in Acorn's own prosecution history for sibling claims. Either is a "metal or a stack of metals deposited on the interface layer" (claim 30).

Where this ground is weakest: Samsung's own record shows the distinct-layer limitation for TiO₂-on-SiO₂ was not squarely met by any single reference in the IPRs; the Board sustained claims 11–12, 14 (and in -1282, 6 and 14–28). A petitioner would need to cure the "distinct TiO₂ layer over a distinct SiO₂ layer" element with a reference expressly depositing TiO₂ onto a residual SiO₂ layer, or with a rationale (e.g., self-limiting deposition / natural native-oxide interlayer) supported by declaration testimony.

Ground E — Any of the above + the § 112 priority-collapse attack (the gating combination)

This is not a classic "two references" combination, but it is the predicate for Ground A and for using Grupp '483 and much of Acorn's own family as § 102(b)/§ 103(a) art:

• Argue that the pre-2011 priority applications provide no written description for the genus "metal oxide" (Acorn's parents disclosed a single species, TiO₂, plus a bare generic mention) and none for the genus "oxide of titanium."
• Consequence: the challenged claims get only their actual-filing-date priority, and Grupp '483 (published as U.S. 2005/0093027, > 1 year before the critical date) becomes § 102(b) prior art for the metal-oxide claims.
• The Board credited this at institution ("the '395 patent is not entitled to priority before the disclosure of the genus of metal oxides in the '522 application, and thus Grupp '483 is prior art") and confirmed it in the FWDs.

A petitioner should pair this § 112 theory with the reference-based grounds so that (i) if the priority break holds, Grupp '483 disposes of the broad claims, and (ii) if it does not, the Goodnick/Taubenblatt/Jammy family (all pre-2002 publications/patents) still supports the ground.

4. The motivation-to-combine showing, consolidated

A POSITA at the relevant times (2011 for the "metal oxide" claims; 2016 for the "oxide of titanium" claims) would have been motivated to combine because:

1. Identical field and identical problem statement. All primary references are directed to controlling the metal–silicon barrier/contact resistance. The '395 patent's own background concedes that "barrier height at a metal-semiconductor interface determines the electrical properties of the junction" and that "such barrier height tuning may become even more important as device sizes shrink."
2. The solution was expressly taught. Taubenblatt 1982/1984 states interfacial SiO₂ decreases the Si-metal barrier; Jammy states a thin metal oxide increases conductance between a metal stud and a source/drain. There is a stated, not inferred, benefit.
3. Predictable results. KSR (550 U.S. at 416, 421) — combination of known elements according to known methods, with no change in their respective functions, and "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious."
4. A finite, identified class. Metal oxides (Al₂O₃, TiO₂, ZrO₂, YSZ, SiON) and semiconductor oxides (SiO₂) were a closed set of known dielectric materials with known bandgaps/barriers; the '395 patent claims no new chemistry, only a geometry (an oxide bilayer between metal and semiconductor).
5. The claimed numeric range is the natural optimum of a known trade-off. FIG. 8 of the '395 patent is itself a curve of "interface-specific contact resistance versus interface thickness" showing a minimum. Reaching a minimum for a known two-mechanism trade-off (tunneling vs. MIGS/barrier) is routine optimization; Iwaguro supplies the quantitative motivation (≥ 100× SCR reduction).

Acorn's rebuttal evidence (and why it largely failed): Acorn advanced unexpected results, long-felt need, time lag, industry praise, commercial success, and copying. Samsung argued (and the record supports) that (a) secondary considerations cannot overcome a strong prima facie case, and (b) no nexus — the two Acorn "Connelly papers" relied on for praise used silicon nitride, which is neither a metal nor an oxide, and therefore do not correspond to the claimed metal-oxide/semiconductor-oxide interface layer. The Board denied institution of the motion-to-exclude issues on other grounds and did not need to reach the secondary considerations to find claims 1–5, 8–9 unpatentable.

5. Bottom line: what the obviousness case does and does not reach

Actual adjudicated results (for calibration):

• IPR2020-01207 (Grupp '483; FWD Feb. 9, 2022, Paper 49; corrected by rehearing order Mar. 15, 2022, Paper 51): claims 1–6, 8, 9, 15, 16 unpatentable; claims 11, 12, 14 not shown unpatentable.
• IPR2020-01282 (Goodnick/Jammy; FWD Feb. 9, 2022): claims 1–5, 8, 9 unpatentable; claims 6, 11–12, 14–28 not shown unpatentable.
• Both FWDs were appealed (Fed. Cir. Nos. 2022-1539 (lead) and 2022-1541, per Samsung's Amended Notice of Appeal; other appeals 22-1540, 22-1541, 22-1542, 22-1499 in the consolidated family) and then voluntarily dismissed Jan. 5, 2023 in connection with the Acorn–Samsung settlement. The Federal Circuit issued no merits ruling, so the Board's mixed results stand unreviewed and the '395 patent's remaining claims retain a presumption of validity — subject to the 2022-08-12 nominal expiration and the statutory disclaimer / certificate of cancellation referenced in the IPR2025-00889 exhibit list (Ex. 1105, Ex. 1106), the scope of which I could not verify.

6. Caveats

• The "Prior Art" section was not present in the fetched page record. I substituted the prior art actually of record from IPR2020-01207 / IPR2020-01282 / the E.D. Tex. contentions. If the task intends a specific front-page "References Cited" list, that list should be supplied and I will re-run the analysis against it.
• Claim numbering is inconsistent across the source documents. The Markman table ties "oxide of titanium and an oxide of the semiconductor" to claims 17–28, while a Schubert declaration excerpt assigns "oxide of titanium" claims to 11–14 and 17–28 and assigns claims 29–30 an Aug. 12, 2002 priority tier — in a document captioned for a related patent (IPR2020-01241 / the '691 family). I have not harmonized these; they should be checked against the issued claim set.
• I have not verified the exact bibliographic identity of "Chang" and "Kim" (full citations, numbers) — they appear in the record only by short name. Confirm via the IPR2020-01282 exhibit list before relying on them as § 103 references.
• I have not verified that every citation above survives the § 102(b)/§ 102(a) date cutoffs for each priority tier. That determination is central and should be made claim-by-claim.
• Where the previously generated litigation summary and the newly retrieved documents touch the same facts, they agree (expiration 2022-08-12; FWD dates of Feb. 9, 2022; the two Samsung petitions and the Grupp '483 / Goodnick–Jammy labels; the CAFC dismissals). The one refinement: the prior summary listed FWD "Paper 49, February 9, 2022" without the rehearing correction — Samsung's amended notice identifies the FWD as Paper 49 as amended by the Order Granting Request for Rehearing, Paper 51 (Mar. 15, 2022), which removed the claim 10 analysis.