- Røde Microphones, LLC / Freedman Electronics Pty Ltd. v. Zaxcom, Inc.Institution deniedPTAB · Sep 30, 2025 · IPR2025-00557 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the “master timecode generator” produces a signal that “controls” another timecode generator. See Prelim. Resp. 19 (citing a dictionary definition of “master” as “[one] that has control over another or others,” Ex. 2019, 3). We see no basis, however, to limit the claim term to a particular type of control. Patent Owner points to Figure 6 of the ’444 patent where “the master timecode generator creates master timecodes that are used to control the speed of the local timecode generator to ensure the two timecode generators are synchronized.” See Prelim. Resp. 19‒20 (citing Ex. 1001, col. 17, ll. 9‒16, Fig. 6). But Figure 6 merely depicts an exemplary “process for recording audio and for replaying and re-recording segments of missed audio in accordance with one embodiment of the present invention.” See Ex. 1001, col. 3, ll. 15‒17. Further, the Specification describes the exemplary embodiment of Figure 6 as a master unit providing master timecodes to a local audio device, which “synchronizes (e.g., jam syncs) its respective on board local timecode generator with the master timecodes,” but does not specify exactly how the master unit exercises control. Id. at col. 17, ll. 9‒17. Thus, we do not include any particular control mechanism (e.g., changing the speed of the local timecode generator) in our interpretation at this time. Based on the record presented, we interpret “master timecode generator” as “a producer of a master time reference signal that controls at least one other timecode generator” and “master timecode” as “a time reference signal used to synchronize at least one device.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not sufficiently shown that Strub teaches or suggests limitation 1[A]. Petitioner relies on Strub’s disclosure of a “master” recording unit as the claimed “remote receiver.” Pet. 34 (citing Ex. 1003, col. 38, ll. 29‒39). The cited portion of Strub is reproduced below: Data other than recording data can also be exchanged between recording units. For example, it may be desirable to coordinate the recordings obtained by recording units so that frames of visual recording data obtained by different recording units are temporally synchronized (e.g., so that a frame begins at the same time for each recording unit). This can be done by transmitting a synchronization pulse from a “master” recording unit to each of the other recording units (“slave” recording units). (Synchronizing analog visual data acquisition devices in this way is referred to as “genlocking.”) Ex. 1003, col. 38, ll. 29‒39. As argued by Patent Owner (see Prelim. Resp. 36), the cited procedure involves synchronizing frames of visual recording data, not audio recording data. Petitioner has not disputed Patent Owner’s assertions that the described “genlocking” technique is a video synchronization technique that does not apply to or affect the synchronization of system clocks or audio timestamps and has no bearing on audio synchronization. Nor does Petitioner explain in the Petition or the Preliminary Reply how or why an ordinarily skilled artisan would have applied this teaching to audio data recorded by an audio device. Petitioner cites this visual recording data synchronization passage as a solution to a problem that Strub identifies in clocks not being adequately synchronized to enable use of time-stamps associated with recordings to be used to synchronize the recordings. See Prelim. Reply 1‒2 (citing Ex. 1003, col. 38, ll. 29‒37, col. 79, l. 63‒col. 80, l. 2). However, immediately following the cited portion that identifies this problem, Strub further explains that “[i]f recording units according to the invention each include a GPS receiver, such mis-synchronization will only exist to an appreciable degree if one or more recording units are shielded from a GPS transmitter system for an extended period of time, e.g., several hours.” Ex. 1003, col. 80, ll. 2–27. Thus, Strub suggests that the solution to this problem is for the recording units to receive their timecodes not from a master recording unit, as argued by Petitioner, but from a GPS satellite.4 Petitioner does not address this teaching.” slip op. at 22
- BurdenNot shown unpatentable
“We agree with Patent Owner that the Petition does not rely on Woo as teaching or suggesting limitation 1[A]; Petitioner relies solely on the teachings of Strub. See Pet. 33–35 (arguing that “Strub teaches this element”). Petitioner references Strub’s teachings as being “consistent with and reinforced by the Woo reference” in the Preliminary Reply (Prelim. Reply 2), but this is not sufficient to rely on Woo, alone or in combination with Strub, as teaching this limitation. We also agree that the Lectrosonics IPRs’ findings regarding Woo teaching the “master timecode generator” limitation recited in those challenged claims are inapplicable here, where claim 1 recites additional limitations not present in those challenged claims. Compare Ex. 1001, col. 43, ll. 26‒27 (claim 1 of the ’444 patent: “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data”) with Ex. 1028, col. 23, ll. 20‒21 (claim 1 of the ’814 patent: “at least one master timecode generator for generating a plurality of master timecodes”) and Ex. 1030, col. 23, ll. 38‒39 (claim 1 of the ’902 patent: “at least one master timecode generator for generating a plurality of master timecodes”). Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,051,444 - PTAB · Aug 29, 2025 · IPR2025-00479 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over Erskine, Scherzer, or Scherzer and Gillett.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’634 patent challenged in the Petition. Therefore, we do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’634 patent (July 2018), a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar major with at least two years of experience in the field; or a master’s degree with specialization in the field,” where “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 7 (citing Ex. 1003 ¶¶ 12–13). Petitioner further argues that a person of ordinary skill in the art would have had knowledge of “[d]esigning and using systems that include endpoint devices (e.g., client devices) and servers for establishing network connections and data transfer,” “[r]ecognizing and applying the client-server architecture,” and “[u]sing and applying concepts from known telecommunication and networking frameworks, protocols and standards, including TCP/IP, IEEE 802.11, VoIP, cellular systems and other known frameworks and standards.” Id. (citing Ex. 1003 ¶ 14). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’634 patent and the types of problems and solutions described in the ’634 patent and cited prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 4–29 (describing in the “Background” section of the ’634 patent a “network connection between two endpoints” and known methods of reaching “full effective bandwidth capacity” in a network).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner notes that it proposed a construction for the claim term “geographical area” in the district court case, but states that it “do[es] not believe proposing a construction for the term is necessary in this proceeding because the relied upon teachings of the prior art references are consistent with examples of ‘geographical area’ included in the ’634 patent [S]pecification.” Pet. 8. Patent Owner argues that “[t]he Board need not engage in express claim construction at this stage of the proceeding.” Prelim. Resp. 5. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- BurdenNot shown unpatentable
“Petitioner has not shown sufficiently that Erskine teaches or suggests the second requirement of limitation [1c], i.e., “initiating the next network connection . . . with a transmission bandwidth based on the parameter values for the past network connection.” Petitioner’s theory is that (1) the QoS parameters in Erskine are for a “past” connection from one zone to another, (2) the sliding maximum interzone bandwidth is “based on” the QoS parameters, and (3) a new call only proceeds if the transmission bandwidth needed for the call added to the current bandwidth being used over the interzone link is less than the sliding maximum interzone bandwidth, so Erskine therefore teaches a call with a transmission bandwidth determined “based on” the sliding maximum interzone bandwidth (which in turn is determined “based on” the QoS parameters). See Pet. 27–28; Ex. 1003 ¶¶ 59–60 (similar testimony from Dr. Crovella). As Patent Owner points out, however, Erskine only makes “a binary, accept/reject decision as to whether to allow a new call to proceed based on a comparison between the bandwidth needed for the call and a predetermined ‘sliding maximum interzone bandwidth value.’” See Prelim. Resp. 6–7. Specifically, the additional bandwidth that would be needed for the call is added to the current bandwidth being used on the interzone link; if the sum of those values is less than the sliding maximum interzone bandwidth for the link, the call “proceeds”; otherwise, it is “blocked.” Ex. 1004, col. 4, ll. 36–40, col. 6, l. 55–col. 7, l. 10, col. 8, ll. 36–43, col. 9, ll. 9–26, col. 10, ll. 23–25 (the sum is compared to the sliding maximum interzone bandwidth “to determine whether enough bandwidth is available to proceed with the new call”), Fig. 3 (steps 308, 310, and 312). Erskine repeatedly refers to the bandwidth for the new call as the amount of bandwidth that is “necessary” or “required” to handle the call. See, e.g., id. at col. 1, ll. 43–57 (“an amount of bandwidth necessary to handle the new call”), col. 6, ll. 61–64 (“the additional bandwidth required (of the new call)”), col. 8, ll. 36–40 (“the bandwidth necessary for the new call”), col. 9, ll. 16–21 (“the anticipated additional bandwidth necessary for the new call”), 54–56 (“the bandwidth amount the new call will utilize (if connected)”), col. 10, ll. 21–23 (same), 41–43 (same), col. 12, ll. 1–2 (“an amount of bandwidth necessary to handle the new call”). It is that value—determined prior to the addition and comparison to the sliding maximum interzone bandwidth—that will be used for the new call if it is allowed to “proceed[].” Id. at col. 6, ll. 64–67 (if the sum is less than the sliding maximum interzone bandwidth, the call “proceeds” and “the QoS table is updated with the additional bandwidth used by that call”). Erskine does not describe the transmission bandwidth for the new call as being based on any parameter values for a past network connection, but rather as “whatever bandwidth the system determined is necessary for the additional call.” See Prelim. Resp. 8–9. In other words, the transmission bandwidth needed for a new call is predetermined and independent of whatever the sliding maximum interzone bandwidth is currently. See id.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,944,634 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967 - Cisco Systems, Inc. v. Scale Video Coding LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01371 · APJ Peter D Shapiro · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–3, 5–8, 10–13, or 15 would have been obvious over either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded by Patent Owner’s arguments that Petitioner has not shown a reasonable likelihood that any of the three cited aspects of Shao- 028 teach or suggest that bandwidth-limited conditions are identified on the link between the video router and the client devices as required by the claims. To the contrary, the only specific discussion of identifying bandwidth in Shao-028 says that it takes place upstream of the video router, rather than downstream in the link in question. See Ex. 1005, 13:39–40. Moreover, the control requests from the client devices do not convey bandwidth conditions at all. We address each of the three arguments from Petitioner on this limitation below.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Accordingly, on this record, Petitioner has not demonstrated a reasonable likelihood that Shao-028 teaches or suggests “identify[ing] bandwidth-limited conditions of an internet protocol network between the video router and a [plurality/set] of video receivers.” As such, Petitioner has not demonstrated a reasonable likelihood that Shao-028 would have rendered independent claims 1, 6 or 11 obvious. As to dependent claims 2, 3, 5, 7, 8, 10, 12, 13 and 15, Petitioner makes no further allegations that would remedy the deficiency discussed above in regards to the independent claims. See Pet. 51–56. As such, Petitioner has not shown a reasonable likelihood that any of claims 1–3, 5–8, 10–13 and 15 would have been obvious over the asserted art in Ground 1. Petitioner in Ground 2 asserts alternative arguments for why independent claims 1, 6 and 11 would have been obvious in view of Shao- 023 and an additional reference Shao-423. Pet. 56–70. Because Ground 2 relies on the same argument for why Shao-023 teaches or suggests the limitation “identify[ing] bandwidth-limited conditions of an internet protocol network between the video router and a [plurality/set] of video receivers,” see Pet. 56, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on Ground 2 for the same reasons discussed above for Ground 1.” slip op. at 19
§ 103 obviousnesscites PhillipsPatents in suitUS 11,019,372 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review unless the information in the petition and preliminary response “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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,123,463 - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Feb 14, 2024 · IPR2023-01391 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving no reasonable likelihood that claims 1–15 were unpatentable over either asserted combination.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2
NonePatents in suitUS 8,719,932 - Trend Micro, Inc. v. Open Text Inc.Institution deniedPTAB · Feb 14, 2024 · IPR2023-01390 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving neither asserted obviousness ground likely to establish claims 1–14 as unpatentable.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. Petitioner asserts that Piccard qualifies as prior art under pre-AIA § 102(e). Pet. 4 (“Piccard . . . is prior art under pre-AIA § 102(e) because it was filed on June 30, 2005, before the earliest possible priority date of the ’243 patent.”). Piccard cannot qualify as prior art under § 102(a) or § 102(b), as Piccard published January 4, 2007, which is after the ’243 patent’s April 20, 2006 filing date. Ex. 1007, code (43); Ex. 1001, code (22). Therefore, Piccard could qualify as prior art only under § 102(e) and may be subject to disqualification under § 103(c)(1). Cf. Unified Patents, Inc. v. Uniloc Luxembourg S.A., IPR2017-02148, Paper 9 at 19–20 (PTAB Apr. 17, 2018) (determining that a reference was not disqualified under § 103(c)(1) because it qualified as prior art under § 102(a) and therefore was not “prior art only under one or more of subsections (e), (f), and (g) of section 102”).” slip op. at 6
§ 102 anticipationPatents in suitUS 8,201,243 - Ao Kaspersky Lab v. Open Text Inc.Institution deniedPTAB · Feb 7, 2024 · IPR2023-01160 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Ideses, alone or with Sharma, teaches selectively turning feature-vector features on or off during classification.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Petitioner fails to show how the disclosures relied on in Ideses teach or suggest “generating a feature vector from [a] plurality of static data points using a classifier” where features are “selectively turned on or off” based on a value of one of the static data points. Even if Ideses’s omission of insignificant features could be considered “turn[ing] [them] on or off,” that happens in the creation of the classifier. Ideses does not teach or suggest “wherein one or more features of the feature vector are selectively turned on or off” subsequent to “generating a feature vector . . . using a classifier,” as recited in each challenged claim.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “one or more features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown sufficiently for institution that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of one of the static data points. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106.” slip op. at 19
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The Petition includes no arguments similar to Dr. Subrahmanian’s testimony in connection with element 18.5.d. Pet. 27–28. Instead, for element 18.5.d, the Petition includes a statement that Ideses “discloses” element 18.5.d and quotes four sentences of Ideses. Id. Additionally, Exhibits 1028 and 1029 are not raised anywhere in the Petition. Id. at 2 (not including either Exhibits 1028 or 1029 in the unpatentability grounds), 11– 18 (providing overviews of only Ideses and Sharma), 18–31, 42, 48 (setting forth an element-by-element analysis based on the teachings of only Ideses). To the extent Petitioner intends to rely on Exhibits 1028 and 1029 to remedy the deficiencies in Ideses, Petitioner’s analysis in that regard needed to be set forth in the Petition. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Also, although Dr. Subrahmanian testifies regarding research for identifying the best subset of features from a larger set of features and adding features to a given set of features, based on Exhibits 1028 and 1029 that research relates to generating classifiers. See Ex. 1028, 182 (describing “feature reduction phase” of the experiment), 183 (describing subsequent “classification stage”); Ex. 1029, 5–6 (describing that feature extraction “was performed,” the classifier was “optimized”, and then the classifier was “run on the independent test data for analysis”). Petitioner has not shown sufficiently for institution that Ideses teaches or suggests “wherein one or more features of the feature vector are selectively turned on or off” subsequent to “generating a feature vector . . . using a classifier,” as recited in each challenged claim. Dr. Subrahmanian does not testify regarding any research or work involving identifying the best subset of features or adding new features to a given suite of features during the classification stage. Also, neither the Petition nor Dr. Subrahmanian’s testimony includes a reason to modify the teachings of Ideses to address element 18.5.d. Ex. 1002 ¶¶ 164–168; Pet. 2, 11–18, 18–31, 42, 48. We, therefore, find that Dr. Subrahmanian’s testimony does not remedy the deficiencies discussed with respect to arguments in the Petition regarding Ideses.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.5” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,409,869 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01004 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Meta did not show a reasonable likelihood that claims 1, 4–6, 8–11, 14, 15, and 17–19 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards A claim is unpatentable for obviousness if “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see 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 “the scope and content of the prior art”; “differences between the prior art and the claims at issue”; and “the level of ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, secondary considerations, such as “commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019). A patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418 (for an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does”). Also, “[t]hough less common, in appropriate circumstances, a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). “Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2016) (stating that “conclusory statements” amount to an “insufficient articulation[] of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 14; see Ex. 1003 ¶¶ 30–35. Patent Owner argues that a person of ordinary skill in the art instead would have had “several years of academic and/or professional experience in a technical field relevant to digital audio signal processing, such as electrical engineering, computer engineering, or computer science; and a familiarity with relevant literature and concepts concerning virtual 3D audio processing, which were widely available at the time of disclosure.” Prelim. Resp. 6. Neither party explains why its proposed definition is appropriate. Based on the record presented, including our review of the ’196 patent and the types of problems and solutions described in the ’196 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of we remove the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 11
- BurdenInstitution denied
“Moreover, though, Petitioner’s showing is insufficient because the preamble and limitation 1[c] recite “moving” the SLP of the voice of the computer program “during the voice exchange between the computer program and the user” (emphasis added). As Patent Owner correctly points out, or pre-recorded sound tracks.” None of the examples in Li includes moving a voice during a voice exchange. Instead, all examples and embodiments in Li are directed to recording, and then moving a 3D sound. Thus, in Li no moving of a sound can happen before first recording it . . . . See Prelim. Resp. 26–28 (also citing the description of Figure 19 shown above as a “reconstruction” of a concert involving sound from multiple instruments); Ex. 1006, code (57), col. 4, ll. 7–16 (stating that the configurable 3D binaural sound is generated “using pre-recorded sound tracks and pre-recorded stereo sound tracks”), col. 5, ll. 7–26, col. 14, l. 58–col. 15, l. 3, col. 21, ll. 38–42, Figs. 7, 8, 20, 25, 27; Ex. 2007 ¶ 27 (“Li gives examples using pre-recorded sounds in fixed positions; this method could not be used for a user to interact dynamically in three dimensions with the spatial configuration of one or more sound sources such as computer voices.”). Also, Li’s users must first input their desired configuration before any binaural sound being rendered—but Li does not disclose a feature that allows users to change their desired configuration during rendering. . . . Li’s music listening example clearly illustrates that users may only place sound sources at their desired spots prior to rendering. . . . Similarly, Li’s conference call example at best suggests that a user can “plac[e] different speaking users at different spots” only prior to rendering the pre-recorded voices of speaking users at the selected spots—once rendered, Li does not disclose that its users may reconfigure during their voice exchange with other speaking users. See Prelim. Resp. 29–30 (citing Ex. 1006, col. 22, ll. 64–67 (“The configurable 3D sound system 900 renders the 3D binaural sound from the input configuration to provide the user with the reconstructed virtual audio 3D space he/she designed.” (emphasis added)), col. 15, l. 61–col. 16, l. 4). that he “read[s] Li as disclosing that moving the sound source . . . takes place during a voice exchange between the computer program and a user/person” is conclusory and unsupported. Id. at 10–13 (quoting Ex. 1003 ¶ 104) (emphasis omitted). Again, the only support for Dr. Kyriakakis’s opinion is the very brief “conference call” excerpt in Li, which we find insufficient for the reasons explained above. See Ex. 1003 ¶ 104 (citing Ex. 1006, col. 21, l. 60–col. 22, l. 5).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Assuming (without deciding) that Li renders obvious a “voice of a computer program” as Petitioner contends,1 we are not persuaded that Petitioner has made a sufficient showing that Li teaches or suggests a “voice exchange between [a] computer program and [a] user,” or moving a SLP of the voice of a computer program during such a “voice exchange,” as recited in limitations 1[pre],2 1[a], 1[c], and 1[d]. 1 Patent Owner disputes whether Li teaches or suggests a “voice of a computer program,” and also argues that the Petition should be denied under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential). Prelim. Resp. 13–22, 50–59. In light of our decision to deny institution for the reasons discussed herein, however, we need not address these arguments. 2 On the record before us, we determine that the preamble is limiting at least because the body of the claim refers to the preamble for antecedent basis for numerous terms, including the “sound localization point (SLP),” “computer program,” “voice of a computer program,” “voice exchange,” and “user.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a how . . . Li’s listener can have voice exchange with a computer program” and fails to “identify what features of Li would need to be modified to include [the recited ‘voice exchange’] and explain how such modifications would work.” Prelim. Resp. 22–26. The plain meaning of “voice exchange between [a] computer program and a user,” as recited in claim 1, is an exchange of voice audio between the computer program and user. See id. at 22; Ex. 1001, col. 35, l. 64–col. 36, l. 1 (the ’196 patent describing an exemplary embodiment where “second user 2362 is speaking to and listening to . . . four others” and “the others are not people but computer programs with interactive audio input/output interfaces” (emphasis added)). Under Petitioner’s first apparent theory that the “voice of a computer program” can be the processed voice of a speaking user as in “other embodiments” of Li, the “other embodiments” all involve recording sound tracks and providing a GUI that allows the user to configure the sound that will later be played back. See, e.g., Pet. 17, 23; Prelim. Resp. 21, 24–25; Ex. 1006, code (57) (“The 3DSPA generates a configurable sound field on a graphical user interface using recorded or pre-recorded sound tracks.”), col. 5, ll. 7–26 (“The 3D sound processing application generates a configurable sound field on a graphical user interface (GUI) provided by the 3D sound processing application using the recorded sound tracks,” “acquires user selections of one or more of multiple configurable parameters,” and “dynamically processes the recorded sound tracks using the acquired user selections to generate a configurable 3D binaural sound.”), col. 14, necessary component of the claimed invention.”). Even if it was not, though, limitations 1[a], 1[c], and 1[d] recite the “voice exchange” discussed herein. from the acoustic beam patterns. . . . The 3D sound processing application generates 703 a configurable sound field . . . using the recorded sound tracks.”), Figs. 7 (steps 702 and 703), 8 (steps 801 and 703), 20 (steps 2001, 2002, and 703), 25 (steps 2501, 2502, and 703), 27 (steps 702 and 703). Petitioner and Dr. Kyriakakis rely on a single sentence in Li that “the configurable 3D sound system 900 provides a method of communication among multiple people, for example, in a conference call, by placing different speaking users at different spots to mimic a real conference room environment.” Ex. 1006, col. 22, ll. 1–5; see Pet. 24; Ex. 1003 ¶ 104. Petitioner does not provide any further explanation as to how a voice exchange would occur during such a “conference call” when modified to use the processed voice of a speaker—which the remainder of Li describes as recorded in advance in sound tracks. Absent additional explanation, we are not persuaded that Li’s brief reference to a “conference call” is sufficient.” slip op. at 20
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,282,196 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,409,869
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.