• Nokia Of America Corporation v. Blackberry Ltd.Rehearing denied
  PTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing

  The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3

  Claim construction§ 102 anticipation
  Patents in suitUS 9,253,772
• Inauth, Inc. v. Msignia, Inc.Institution denied
  PTAB · May 10, 2018 · IPR2018-00150 · APJ James B Arpin · IPR · Institution

  The Board denied institution on claims 1–25 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Petitioner and Patent Owner agree that only the term: “generating a challenge” recited in each independent claim requires express construction. Pet. 13; Prelim. Resp. 4–5; see Paper 11. Moreover, Petitioner and Patent Owner agree that “generating a challenge” should be construed as “generating a request for information.” Pet. 13; Prelim. Resp. 4. Nevertheless, Patent Owner further clarifies that the “challenge” is a challenge to the computer that is to be authenticated. Prelim. Resp. 4. We believe that this clarification is apparent from the context in which the construed term is used in the independent claims. See Pet. 13 (“As used in the specification, the challenge is a request to the computer to provide information based on selected minutia.”). On this record and for purposes of this Decision, we adopt the parties’ agreed upon construction, in view of Patent Owner’s clarification that the challenge is to the computer seeking authentication, as the broadest reasonable interpretation of this term.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success

    “With respect to Claims 1, 24, and 25, to the extent Patent Owner contends that Etchegoyen does not anticipate because it does not disclose a single embodiment that uses both the request/response protocol (i.e., challenge/response protocol) to obtain a fingerprint and the typical-upgrade ratio to analyze the fingerprint, it would have been obvious to a [person of ordinary skill in the art] to modify the embodiments disclosed to include both aspects. Id. at 37 (citing Ex. 1003 ¶ 151). Patent Owner contends, however, that Etchegoyen fails to disclose the limitations of claim 1 relating to “anticipated changes” including “storing information associated with one or more identities, wherein the information stored for an identity includes (a) data values associated with that identity; and (b) information regarding anticipated changes to one or more of the stored data values associated with that identity” and “determining whether the response is allowable, wherein such determining comprises using the stored information regarding anticipated changes to the stored data values associated with the identity to determine whether a data value used to form the response is based on an acceptable change to a corresponding stored data value.” Prelim. Resp. 7– 11. For the reasons discussed below, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its assertion that Etchegoyen discloses each and every element or teaches or suggests all of the limitations recited in independent claims 1, 24, and 25.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,559,852
• Dali Wireless Inc. v. Commscope Technologies LLCRehearing denied
  PTAB · Jan 9, 2018 · IPR2017-01324 · APJ Terrence W Mcmillin · IPR · Rehearing

  The Board denied rehearing and left in place its denial of institution for claims 1–5 and 7–17 because the petition did not show the references taught the sample-rate limitation or provide adequate motivation to combine.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We interpret claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b). In applying a broadest reasonable construction, claim terms generally 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. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner’s new claim construction argument was not made in the Petition. See Pet. 10 (“Claim Construction”). In the Request for Rehearing, Petitioner does not cite to the Petition or make any showing that this argument was made explicitly or implicitly in the Petition. Req. Reh’g 4–6. As an initial matter, we could not have overlooked or misapprehended a claim construction that Petitioner did not argue in the Petition. Moreover, Petitioner’s only support for its newly proposed construction is the wording of the claims themselves and a claim differentiation argument based on dependent claim 6 which recites that the “sample rate is proportional to the bandwidth.” Id. Petitioner fails to persuade us that its proposed construction is supported adequately by the wording of the claims, the Specification, and the file history. We also conclude that Petitioner’s “somehow related to” construction of “based on” is unreasonable and overly broad. Based on this record, we decline to adopt Petitioner’s proposed construction. Thus, Petitioner fails to show that it argued this construction in the Petition or that its construction is demonstrably correct in view of the claim language, the Specification, the file history, or other evidence. Further, as stated in the Decision Denying Institution, we do not believe the express construction of “sample rate based on the bandwidth” is necessary for this Decision. See DDI 6. As shown below, Petitioner has failed to establish the applied art teaches or suggests basing the sample rate, directly on the bandwidth or that the sample rate is somehow related to the bandwidth.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “With regard to the combination of Bellers and Farhan, in the Petition, Petitioner cited paragraphs 117–120 of the Bims Declaration (Ex. 1002) as providing support for combining the teachings of these references. Pet. 11. As discussed in the Decision Denying Institution, however, the cited paragraphs relate to different subject matter. DDI 14. In the Request for Rehearing, Petitioner now relies upon paragraphs 104–107 of the Bims Declaration. Req. Reh’g 14. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. With regard to the combination of the teachings of Ichiyoshi and Farhan, in the Petition, Petitioner cited paragraph 254 of the Bims Declaration. Pet. 12. As discussed in the Decision Denying Institution, the cited paragraph relates to different subject matter. DDI 15. In the Request for Rehearing, Petitioner now relies upon paragraphs 255–258 of the Bims Declaration. Req. Reh’g 9. Petitioner did not rely upon these paragraphs in the Petition, and Petitioner provides no explanation for this change of argument and evidence in its Request for Rehearing. Id. As noted above, we could not overlook or misapprehend arguments that Petitioner did not make or evidence upon which it did not rely. Thus, contrary to Petitioner’s assertion, we did not overlook argument or evidence presented in the Petition relating to motivation to combine. Moreover, we have reconsidered Petitioner’s reasons to combine for the combinations of (1) Bellers and Farhan; and (2) Ichiyoshi and Farhan provided in the Petition (Pet. 11–12) in light of the additional citations provided in the Request for Rehearing and find, as we did in the Decision Denying Institution (Dec. 13–15) that Petitioner has failed to show a reasonable likelihood of establishing a reason to combine the relevant teachings of these references. As we indicated in the Decision Denying Institution (id.), the reasons to combine in the Petition for all of the asserted combinations of references were brief and conclusory. With regard to the combination of Bellers and Farhan, the Petition states, “[i]t was commonly understood that flexible ADCs could have a sampling rate adapted to the associated bandwidth of their analog input signal.” Pet. 11 (emphasis added). With regard to the combination of Ichiyoshi and Farhan, the Petition states, “POSITAS would have been motivated to combine Ichiyoshi’s sampling system with Farhan’s broadband communications system based on POSITA’s commonly understood knowledge that optimizing RF signal sampling rates can further improve bandwidth efficiency.” Pet. 12 (emphasis added). Neither the Petition nor the Bims Declaration provide adequate support for the assertions as to what was “commonly understood” by persons of skill in the art. The only support given in the Bims Declaration for these assertions are quotations from the art cited in the Petition (see Ex. 1002, ¶¶ 104, 255), which fall far short of establishing what was “commonly understood” as of the date of filing the” slip op. at 10

  • BurdenNot shown unpatentable

    “2. Bellers (Ex. 1006)3 Petitioner argues Bellers teaches “selecting the sample rate based on bandwidth.” Req. Reh’g 9–13. As noted by Petitioner (id. at 10–11), Bellers states: “[r]eceiver 101 includes a sampling mechanism 104 which samples the analog video input signal at a frequency modulated by or dependent upon the spatial frequency of the sampled content” (Ex. 1006, 3:11–14) and “[t]he present invention employs a sampling rate which is modulated based upon the spatial frequencies of the content being sampled. Higher sampling rates, and larger sample densities, are employed for content having high spatial frequencies while lower sampling rates are employed for content having low spatial frequencies” (id. at 4:14–19 (emphasis added)). Bellers expressly defines spatial frequencies, as follows: “[t]he spatial frequency or frequencies of an image are the rates of pixel change per unit distance, usually expressed in cycles per degree or radian.” Id. at 1:11–13. Thus, Bellers teaches modulating the sampling rate based on the rates of pixel change per unit distance. Petitioner has not shown that Bellers teaches or suggests a “sample rate selected based on the bandwidth.” Petitioner has not directed our attention, either in the Petition or the Request for Rehearing, 3 U.S. Patent No. 8,446,530 B2. to teachings or suggestions in Bellers of selecting the sample rate based on the bandwidth. 3. Ichiyoshi (Ex. 1009)4 In both the Petition (Pet. 83, 86, 90, 95–96) and the Request for Rehearing (Req. Reh’g 7–8), Petitioner argues the following passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. The sampling frequency fs is normally set to fs = NΔf where Δf represents a channel frequency interval. The sampling frequency fs is generated independently in the transmission device 81 and the reception device 82. Ex. 1009, 6:3–6. . . . signal combining circuit 91 includes a sampling timing generator 1 for generating a signal of the sampling frequency fs, and N A/D converter 3 for sampling N independent information signals with the sampling frequency fs . . . Id. at 6:9–13. These passages, however, do not relate to selecting the sample rate based on bandwidth. Petitioner provides no adequate explanation or other support in the Petition (Pet. 83) or the Request for Rehearing (Req. Reh’g 7– 8) for concluding these passages in Ichiyoshi teach or suggest selecting the sample rate based on bandwidth. Indeed, in the Petition, the Petitioner quoted these two passages, but failed to provide any explanation or to cite any further support for finding Ichiyoshi taught or suggested selecting the sample rate based on bandwidth. See Pet. 83. B. Reason to Combine” slip op. at 8

  Claim construction§ 103 obviousness
  Patents in suitUS 7,848,747
• Facebook, Inc. v. Sound View Innovations, LLCRehearing denied
  PTAB · Oct 19, 2017 · IPR2017-00985 · APJ James B Arpin · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–3 because the petition lacked required means-plus-function constructions under the adopted claim-construction standard.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”).” slip op. at 6

  • BurdenDecided for patent owner

    “Under our Rules setting forth the requirements for the content of the petition, “[w]here the claim to be construed contains a means-plus-function . . . limitation as permitted under 35 U.S.C. [§ 112, ¶ 6], the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis added); see Inst. Dec. 13. Thus, where the challenged claim contains a means-plus-function limitation, the petition must provide a means-plus-function construction for that limitation. Consequently, it was not our task to determine first whether the word “controller” is a nonce word potentially subjecting the claim terms to treatment under 35 U.S.C. § 112, ¶ 6, and only then to receive arguments from Petitioner on their construction. See Reh’g Req. 4 (“Without a predicate finding that § 112, ¶ 6 applies, the Petition’s silence on the identity of a ‘corresponding structure’ had no relevance to the issue of claim construction.” (emphasis added)). Our Rules do not require such a “predicate finding,” and we made no such finding regarding the construction of the “controller” terms. See Inst. Dec. 11 (“For the reasons set forth below, we do not need to construe this claim term or determine its definiteness.”). In the absence of arguments under the appropriate standard from at least Petitioner during the Preliminary Proceeding, we have no basis for construing the “controller” terms. See id. at 13–14 (“The analysis of Petitioner’s arguments regarding claims 1–3 begins and ends with Petitioner’s failure to provide constructions of the claim terms including “controller” under 35 U.S.C. § 112, ¶ 6, and we cannot evaluate Petitioner’s asserted ground with respect to claims 1–3 in the absence of such constructions.”). It was Petitioner’s task to determine the necessary claim term constructions to support its request for inter partes review and to present those constructions as part of its Petition. Petitioner failed to do that here with respect to the “controller” terms. Thus, contrary to Petitioner’s assertion, we did not misapply the law governing interpretation of means- plus-function claim limitations; rather, due to the lack of any arguments or evidence from Petitioner, we did not and could not apply it at all. Consequently, we deny Petitioner’s request that we reconsider our Institution Decision and institute inter partes review of claims 1–3 of the ’371 patent.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for patent owner

    “It is hard to see where efficiency is achieved by having two tribunals simultaneously consider different claim constructions under the same standard.4 Nevertheless, we cannot find where Petitioner made this argument in its Petition or its Reply, nor does Petitioner identify where it previously raised this argument. See id. at 7–8; see also 37 C.F.R. § 42.71(d) (“The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.”). It goes without saying that we could not have overlooked or misunderstood an argument not made, and it is not an abuse of discretion not to consider such an argument.” slip op. at 11

  Claim construction
  Patents in suitUS 6,125,371
• Apple Inc. v. Valencell, Inc.Institution denied
  PTAB · Jun 5, 2017 · IPR2017-00316 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on claims 1–6, 8–16, and 18–20 because Petitioner did not show a reasonable likelihood that the prior art taught the substantially parallel light directions.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Patent Owner’s Preliminary Response, and for the reasons that follow, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Petitioner will prevail in challenging claims 1–6, 8–16, and 18–20 as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of any challenged claim of the ’830 patent.” slip op. at 2

  • BurdenDecided for patent owner

    “On this record, we are not persuaded that Petitioner presents sufficient evidence to support a finding that Haahr discloses a device where “the light transmissive material is configured to deliver light from the at least one optical emitter to the body of the subject along a first direction and to collect light from the body of the subject and deliver the collected light in a second direction to the at least one optical detector, wherein the first and second directions are substantially parallel,” as required by independent claims 1 and 11. Here, even assuming that some of the light emitted from the LEDs is in an orthogonal direction, Petitioner’s declarant fails to provide supporting evidence or persuasive explanation why some of the backscattered light would also be delivered to the photodiode in an orthogonal direction. Dr. Anthony refers to the emitted light being reflected and refracted and changing direction within a patient’s body, but provides only a conclusory view that one of ordinary skill in the art would know that some of the light would be received by the photodiode in an orthogonal angle. See Ex. 1003 ¶ 77. Speculation alone is insufficient to support a finding of a reasonable likelihood of prevailing in showing obviousness.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “On this record, we are not persuaded that Petitioner presents sufficient evidence to support a finding that Haahr discloses a device where “the light transmissive material is configured to deliver light from the at least one optical emitter to the body of the subject along a first direction and to collect light from the body of the subject and deliver the collected light in a second direction to the at least one optical detector, wherein the first and second directions are substantially parallel,” as required by independent claims 1 and 11. Here, even assuming that some of the light emitted from the LEDs is in an orthogonal direction, Petitioner’s declarant fails to provide supporting evidence or persuasive explanation why some of the backscattered light would also be delivered to the photodiode in an orthogonal direction. Dr. Anthony refers to the emitted light being reflected and refracted and changing direction within a patient’s body, but provides only a conclusory view that one of ordinary skill in the art would know that some of the light would be received by the photodiode in an orthogonal angle. See Ex. 1003 ¶ 77. Speculation alone is insufficient to support a finding of a reasonable likelihood of prevailing in showing obviousness.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation approach). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although the parties propose claim constructions for some terms, at this juncture of the proceeding, we determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 7

  Claim construction
  Patents in suitUS 8,989,830
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 24, 2016 · IPR2016-00325 · APJ James B Arpin · IPR · Institution

  The Board denied institution for claims 42–44 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review of claims 42–44 of U.S. Patent No. 7,000,063 B2 (Ex. 1001, “the ’063 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or “Pet.”). Innovative Memory Systems, Inc. (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we deny institution of an inter partes review of any of claims 42–44 of the ’063 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “2. “write-once memory cells” (Claims 42–44) Patent Owner contends that the term “write-once memory cells” means “memory cells to which data can be written only once.” Prelim. Resp. 7 (emphasis added). Petitioner does not propose a construction for this term. See Pet. 9–12.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner contends that Kasa does not disclose the “rendering” step of claim 42. Prelim. Resp. 15–17. In particular, Patent Owner contends that Kasa does not disclose causing a write-many memory cell to become a write-once memory cell. Id. at 15–16. Instead, Patent Owner contends that “Kasa merely discloses causing a write-many memory cell to become a read- only memory cell, i.e., a memory cell to which data can no longer be written,” after the data to be protected has been written to the write-many OTP sector. Id.; see Ex. 1005, col. 11, ll. 27–30 (“As set forth above, when the OTP sector write-protect CAM 34 is in the programmed state, the OTP sector 26 can only be used as a read-only sector.” (emphasis added)).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. Analysis of Challenge to Claim 43 Claim 43 depends directly from independent claim 42 and recites the method of claim 42 “wherein the memory device comprises a modular memory device that is removabl[y] couplable [with] a host device.” Ex. 1001, col. 10, ll. 33–35; see id., Certificate of Correction. Petitioner argues that Dipert teaches the additional limitations of claim 43 and that a person of ordinary skill in the art would have reason to combine the teachings of Kasa with those of Dipert to achieve the method recited in claim 43. Pet. 25–28. However, Petitioner relies solely on the teachings of Kasa to supply the limitations of independent claim 42. Id. at 27. Patent Owner contends that, because Kasa fails to disclose each and every element of claim 42, Kasa also fails to teach or suggest the limitations of dependent claim 44. See Prelim. Resp. 18. In view of our analysis of the arguments with respect to claim 42 (see supra Section II.B.3.a.), we agree with Patent Owner. Consequently, on this record, we are persuaded that Petitioner fails to demonstrate a reasonable likelihood of prevailing in showing that Kasa and Dipert render claim 43 of the ’063 patent obvious.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,000,063
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 13, 2016 · IPR2016-00324 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution for claims 1, 2, 4, 5, 9–11, and 15–17 because it could not determine the scope of two module limitations needed to assess the obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “If the scope and meaning of the claims cannot be determined without speculation, the differences between the challenged claims and the prior art cannot be ascertained. BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner’s contention that 35 U.S.C. § 112 ¶ 6 governs the term “error correction module” is persuasive. Contrary to Patent Owner’s arguments, nothing in the claims or the ’212 patent Specification indicates that a skilled artisan would recognize “error correction” or “error correction module” as a name for structure. See Rodriguez, slip op. at 22–23. The term “error correction” signifies the function of correcting errors, as performed by some type of hardware or algorithm working with a special computer processor. See Ex. 1001, 10:34–38, 10:62–11:5 (briefly describing functionality involving flexible error correction codes depending on the host’s capability and the NAND memory device’s reliability). The ’212 patent Specification also indicates that the claimed controller and ECC module applies to “future . . . NAND devices . . . expected to be less reliable than current . . . devices and to require a much stronger ECC capability.” Ex. 1001, 6:57–59; see also id. at 7:30–39 (describing “ongoing need . . . [to] provide compatibility between a host device . . . and successive generations of NAND flash memory devices”). According further to the Specification, the acronym “ECC” stands for “Error Correction Codes”––– indicating that error correction requires some type of coding (via ECC module 132). See Ex. 1001, 4:61–63; Fig. 5A.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “II. ANALYSIS A. Patent Owner’s 35 U.S.C. § 325(d) Arguments Patent Owner argues that the Petition should be denied under 35 U.S.C. § 325(d), because the Examiner previously considered Sakaue during prosecution as evidenced by an Information Disclosure Statement and a “List of References Cited by Applicant and Considered by Examiner.” See Prelim. Resp. 23–24. Although 35 U.S.C. § 325(d) permits the Board to reject a petition because the same or substantially the same prior art or arguments were considered previously in another proceeding before the Office, it does not require the Board to do so. We decline to reject the Petition merely because the Examiner previously considered Sakaue. The record here presents detailed arguments and evidence related to the scope of the challenged claims, and with respect to Sakaue, not before the Examiner, and we decline to institute for other reasons as discussed below. See Pet. 4– 9, 17–19, 23–60.” slip op. at 6

  Claim constructionDiscretionary denialcites Graham
  Patents in suitUS 7,886,212
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · May 16, 2016 · IPR2016-00149 · APJ James B Arpin · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12, 24, and 33–38 were unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “As with any claim term, we begin our construction with the words of the claim term. We give those words their ordinary and customary meaning as they would have to a person of ordinary skill in the art in question, in the context of the specification. See Morris, 127 F.3d at 1054; Translogic, 504 F.3d at 1257. Neither party, however, provides an express definition of the words “cache” or “content” in this term. See Pet. 14; Prelim. Resp. 12–13. Relevant dictionary definitions of these words closely predating the filing of the application that issued as the ’968 patent were:” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “As Patent Owner points out, however, Petitioner has modified the actual construction adopted by the U.S. District Court, substituting “digital” for “cached” in the construction contained in the Court’s Order. Prelim. Resp. 18 (citing Ex. 2002, 4). Further, the Specification of the ’968 patent provides a definition of this term, specifically, “a policy-based index, which is a data structure indicating allowability of cached content relative to a 4 Patent Owner also contends that we should not consider the Finjan Claim Chart (Ex. 1003) or Petitioner’s arguments relying thereon because “Petitioner’s unreasonable position stems from a violation of Rule 408 of the Federal Rules of Evidence.” Prelim. Resp. 3. We usually do not consider the admissibility of evidence at this stage of a proceeding, and, given the current record, we need not and do not do so here. See Symantec, Corp. v. RPost Comm. Ltd., Case IPR2014-00353, slip op. 3 (PTAB June 9, 2014) (Paper 14) (“We agree with Petitioner that the issue, at this stage at least, is not the admissibility of Exhibit 1008 under Rule 408.”). plurality of policies” (emphasis added). Id. at 7 (quoting Ex. 1001, col. 2, ll. 4–6). In effect, Petitioner seeks to read “cached” out of the interpretation of this term. Such an interpretation would be inconsistent with the Specification, as well as with the U.S. District Court’s Order, and is rejected. Here, we are persuaded that the construction of this term agreed to by the parties and adopted by the U.S. District Court is the broadest reasonable interpretation in light of the Specification of the ‘968 patent in which it appears. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”). Further, we find the construction giving effect to the phrase “cached content” is consistent with the other terms of independent claims 1 and 33. Thus, the broadest reasonable interpretation of this term is “a data structure indicating allowability of cached content relative to a plurality of policies.”” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “content,” and claim 33 recites “a memory for storing a cache of digital content.” Ex. 1001, col. 9, ll. 49–50, col. 13, ll. 2–3. Petitioner argues that Xie teaches these limitations “by disclosing a firewall storing packets that are to be processed according to an access control policy.” Pet. 20 (citing Ex. 1002 ¶¶ 122–124). In particular, Petitioner argues that “Xie’s firewall memory teaches the claimed memory, and Xie’s packets stored on the firewall memory teach the claimed digital content.” Id. (emphasis added). Nevertheless, Dr. Rubin testifies that 124. Xie thus teaches these features by disclosing a firewall storing packets that are to be processed according to an access control policy. Xie’s firewall memory discloses the claimed memory, and Xie’s packets stored on the firewall memory disclose the claimed digital content. The claimed “cache” of digital content is disclosed by the readable and writable memory space in which the packets in Xie are stored, such that the packets may quickly, easily, and/or conveniently be accessed during packet processing. A [person of skill in the art (“POSA”)] would have known that, when processing packets at a firewall or other network communication device, packet information has to be transiently stored while the packet information is acted upon by the policies of the network communication device, and the POSA would have known that the memory space accomplishing such storage may be referred to as a cache. Therefore, the combination of Xie and Zuk renders obvious claim elements 1[b] and 33[b]. Ex. 1002 ¶ 124 (emphasis added). Thus, Dr. Rubin testifies that Xie only teaches “transiently” storing packet information on the firewall during packet processing. Id. Nevertheless, Dr. Rubin testifies that “the POSA would have known that the memory space accomplishing such storage may be referred to as a cache.” Id. (emphasis added). Despite Dr. Rubin’s testimony that a memory space on Xie’s firewall that “transiently” stores packets during processing may be referred to as a “cache,” Patent Owner contends that Petitioner fails to show that Xie teaches “a cache of digital content,” as recited in challenged claims 1 and 33. Prelim. Resp. 33–34. In particular, Patent Owner contends that “Petitioner simply alleges that ‘Xie’s packets stored on the firewall memory teach the claimed digital content’ which gives no effect to the ‘cache’ language recited in the claim. Petition at 20.” Prelim. Resp. 33–34. As noted above, the Specification of the ’968 patent makes clear that the purpose of “a cache of digital content” is to ensure that previously retrieved content is available for prompt retrieval in response to a subsequent request. See Ex. 1001, col. 1, ll. 10–47. In view of the foregoing construction of these claim terms, we are not persuaded that Petitioner demonstrates that the memory space on Xie’s firewall that “transiently” stores packets during processing is the “cache of digital content” recited in claims 1 and 33. See supra Section II.A.1.” slip op. at 22

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,965,968
• Palo Alto Networks, Inc. v. Finjan, Inc.Institution denied
  PTAB · May 16, 2016 · IPR2016-00150 · APJ James B Arpin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1–38 obvious over the asserted combinations.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “the claim term. We give those words their ordinary and customary meaning as they would have to a person of ordinary skill in the art in question, in the context of the specification. See Morris, 127 F.3d at 1054; Translogic, 504 F.3d at 1257. Neither party, however, provides an express definition of the words “cache” or “content” in this term. See Pet. 12–13; Prelim. Resp. 14. Relevant dictionary definitions of these words closely predating the filing of the application that issued as the ’968 patent were: cache n. A special memory subsystem in which frequently used data values are duplicated for quick access. A memory cache stores the contents of frequently accessed RAM locations and the addresses where these data items are stored. When the processor references an address in memory, the cache checks to see whether it holds that address. If it does hold the address, the data is returned to the processor; if it does not, a regular memory access occurs. A cache is useful when RAM accesses are slow compared with the microprocessor speed because cache memory is always faster than main RAM memory. See also disk cache, wait state.” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “As Patent Owner points out, however, Petitioner has modified the actual construction adopted by the U.S. District Court, substituting “digital” for “cached” in the construction contained in the Court’s Order. Prelim. Resp. 19 (citing Ex. 2002, 4). Further, the Specification of the ’968 patent provides a definition of this term, specifically, “a policy-based index, which is a data structure indicating allowability of cached content relative to a plurality of policies” (emphasis added). Id. at 6 (quoting Ex. 1001, col. 2, ll. 4–6). In effect, Petitioner seeks to read “cached” out of the interpretation of this term. Such an interpretation would be inconsistent with the Specification, as well as with the U.S. District Court’s Order, and is rejected. Here, we are persuaded that the construction of this term agreed to by the parties and adopted by the U.S. District Court is the broadest reasonable interpretation in light of the Specification of the ‘968 patent, in which it appears. Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“The fact that the board is not generally bound by a previous judicial interpretation of a disputed claim term does not mean, however, that it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.”). Further, we find the interpretation giving effect to the phrase “cached content” is consistent with the other terms of independent claims 1, 13, 23, 26, 32, and 33. Thus, the broadest reasonable interpretation of this term is “a data structure indicating allowability of cached content relative to a plurality of policies.”” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “terms is “data representing one or more attributes or characteristics of digital content.” Pet. 13. A relevant definition of a “profile” is “a set of characteristics or qualities that identify a type or category of person or thing.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 1053 (2nd Random House ed. 1999) (Ex. 3002). Further, the Specification of the ’968 patent explains, Typically, content scanner 170 scans received content and determines a profile therefor, so that content evaluator 180 can determine allowability of content by comparing the content profile to a policy. In general, content scanner 170 produces a content profile as output, from a digital content as input; and content evaluator 180 produces a Boolean yes/no result as output, from a profile and a policy as input. Pet. 13 (quoting Ex. 1001, col. 4, ll. 1–8). Patent Owner’s contention here that we construe this term according to its plain and ordinary meaning, without telling us what that meaning is, is entirely unhelpful. Prelim. Resp. 20. Therefore, consistent with the Specification of the ’968 patent and the use of the word “content” elsewhere in the claims, as well as the relevant dictionary definition quoted above, we construe this term to mean “data representing a set of characteristics or qualities that identify a type or category of digital content.”” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2 Petitioner’s declarant proposes an assessment of the level of ordinary skill in the art. Ex. 1002 ¶ 27. Patent Owner does not propose an alternative assessment. See Prelim. Resp. 55. For purposes of this Decision, and to the extent necessary, we adopt Petitioner’s declarant’s assessment.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,965,968
• Symantec Corp. v. Finjan, Inc.Institution denied
  PTAB · Mar 11, 2016 · IPR2015-01894 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 7, 11, 15, 16, 41, or 43 would have been obvious over any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “III. CONCLUSION On this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood that it would prevail in showing the unpatentability of any of claims 1, 7, 11, 15, 16, 41, and 43 of the ’844 patent on the grounds asserted in the Petition. Consequently, the Petition is denied as to each of the asserted grounds. IV. ORDER Accordingly, it is: ORDERED that the Petitioner is denied, and no inter partes review is instituted as to any of claims 1, 7, 11, 15, 16, 41, and 43 of the ’844 patent.” slip op. at 29

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for three limitations recited in means-plus-function format in independent claim 43: “means for receiving,” “means for generating,” and “means for linking.” Pet. 14–17. Patent Owner responds to each of Petitioner’s proposed constructions, offering competing constructions for the second and third of those limitations. Prelim. Resp. 5–10. Pursuant to 37 C.F.R. § 42.104(b)(3), the parties identify specific portions of the ’844 patent’s specification that they allege describe the structures corresponding to the claimed functions. Neither party, however, explains how the construction of these limitations is material to our decision of whether to institute a trial. On this record and for purposes of this Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that claim terms need only be construed to the extent necessary to resolve the controversy).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “patent are rendered obvious by the references described above. See supra Sec. I.F. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter[,] as a whole[,] would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art1; and (4) objective evidence of nonobviousness, i.e., secondary considerations.2 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). On this record and for the reasons set forth below, we are not persuaded that Petitioner demonstrates a reasonable 1 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13–14; see Ex. 1017 ¶¶ 27–29. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. 2 Although Patent Owner presents arguments regarding secondary considerations (Prelim. Resp. 45–48), we need not reach those arguments because we find that Petitioner’s evidence and arguments regarding the obviousness of the challenged claims are deficient.” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “As an initial matter, we are not persuaded on this record by Patent Owner’s assertions that Cline is not analogous art to the ’844 patent. Id. at 24–27. Although Cline is concerned with interoperability, rather than security per se, we decline Patent Owner’s invitation to define the field of endeavor so narrowly. Both Cline and the ’844 patent fundamentally are concerned with the analysis of computer code, even if their intended applications differ. Moreover, we are not prepared on this record to say that methods that may be employed in determining compatibility are not reasonably pertinent to identifying security threats. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.”).” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,154,844

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.