• Thor Industries, Inc. / Keystone RV Company et al. v. Grand Design RV, LLCInstitution denied
  PTAB · Jul 14, 2022 · IPR2022-00411 · APJ Paul J Korniczky · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6–9, 11, or 13 were unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “authority to institute an inter partes review if “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a) (2018). After considering the Petition, Preliminary Response, and other evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims. Thus, we deny Petitioner’s request to institute an inter partes review of claims 1, 2, 6–9, 11, and 13 of the ’690 patent.” slip op. at 2

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “2 The substantive discussion in Petitioner’s three declarations are essentially identical to each other and to the Petition. For example, pages 40–74 of the Petition are essentially identical to a single paragraph in each of the declarations –– Hopkins Decl. ¶ 88 on pages 54–92, Keough Decl. ¶ 88 on pages 63–97, and Denton Decl. ¶ 65 on pages 46–81. Thus, we question whether the declarations provide independent analysis and we give the declarations little, if any, weight. See Intex Recreation Corp. et al. v. Team Worldwide Corp., IPR2018-00875, Paper 129 at 40, n. 15 (PTAB Sept. 11, 2019) (“We further note that Dr. Stevick’s testimony is nearly identical to the language appearing in the Patent Owner Response, down to the case citation. This identity in language causes us to attribute less weight to a declarant’s testimony.” (citations omitted)).” slip op. at 7

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that Petitioner’s definition is unclear. Prelim. Resp. 14. Petitioner’s definition includes unclear and subjective requirements such as that the person of ordinary skill in the art have (a) worked “long enough to be aware of” certain items, including unexplained “primary existing RV features,” (b) familiarity with unexplained “common terminology,” (c) “good mechanical aptitude,” (d) “good spatial perception,” (e) “significant experience” with a wide variety of roles, and (f) “sufficient awareness of the various governmental regulations applicable to RVs.” Id. (citing Pet. 18–20). Patent Owner’s proposed definition of the person of ordinary skill in the art appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’690 patent. See GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Patent Owner.” slip op. at 12

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

    “While we generally agree with Patent Owner that a person of ordinary skill in the art would understand that a truss and beam, as used in the ’690 patent, are two different structures, serve different purposes, and provide different benefits to the overall design of a chassis, Patent Owner identifies the function, but not the structure, of a truss and beam. After considering the extrinsic and intrinsic evidence, we construe: (1) a beam to be a “body, with one dimension large compared with the other dimensions, configured to carry lateral loads (perpendicular to the large and bending dimension) and bending movements;” and (2) a truss to be a “frame built from members in tension and compression.” These definitions are consistent with the support structures shown in Figures 7 and 9 and discussed in column 3, lines 21–48 of the Specification. Referring to Figures 7 and 9, for example, truss 93C is a frame built from members in tension and compression and beam 93D has one large dimension and supports loads applied to its perpendicular axis. In addition, third section 93 of chassis 90 has beams, not trusses. Ex. 1001, 3:26–28.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 10,046,690
• Helen Of Troy Limited v. Tomy International, Inc.Institution denied
  PTAB · Feb 7, 2022 · IPR2021-01208 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution on claims 1–21 because the Petition did not show a reasonable likelihood of prevailing on anticipation by Song or obviousness over Song alone, with Kilion, or with Kassai.

  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 and any response thereto shows “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, upon considering the Petition, Preliminary Response, and evidence of record, we determine the information presented in the Petition does not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’176 patent “would be someone with a Bachelor’s degree in industrial design or furniture design with a focus on designing adjustable or reconfigurable furniture, or with one to two years of experience designing adjustable furniture or other products for infants or children.” Pet. 9 (citing Ex. 1002 ¶ 10). Patent Owner indicates that it “does not submit a different level of ordinary skill than the Petitioner.” Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6

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

    “Petitioner states that it “does not believe any special claim constructions are required for the Board to conclude that the asserted prior art renders the challenged claims unpatentable.” Pet. 9. Patent Owner generally agrees, stating that “the Board does not need to construe the claims to deny institution.” Prelim. Resp. 11. We determine that for the purposes of this Decision, it is unnecessary to expressly construe these claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs in the context of an inter partes review).” slip op. at 8

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

    “that Patent Owner has the better position. With respect to Petitioner’s annotated versions of Song’s Figures 2 and 3, we agree that Petitioner’s arguments are not supported. To be sure, drawings may be relied upon for the purposes of anticipation. In re Bager, 47 F.2d 951, 953 (CCPA 1931) (“Description for the purposes of anticipation can be by drawings alone as well as by words.” (citation omitted)). Nonetheless, an ambiguous reference cannot anticipate a claim. Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017). With respect to Figure 3, Song does not expressly teach that the bottom portion of water tank 3 is rigid. Rather, Song teaches that water tank 3 is made with foldable wall 2 that can be folded inward. Ex. 1005, 3. The support legs are also foldable to the inside of support levers 4 and each part can be joined and affixed in a small volume. Id. In other words, the walls, legs, and levers are folded together into a small volume to make the bathtub “convenient to carry.” Id. As such, we agree with Patent Owner that Figure 3 may very well depict the folded bathtub with a taut or folded wall (including the tank bottom) rather than a rigid material. The point, here, though is that we cannot tell from Figure 3 why the tank bottom is depicted as it is shown. Moreover, Song’s express description of the folded bathtub shown in Figure 3 does not support Petitioner’s position that the straight tank bottom must be rigid. Similarly, it is ambiguous as to whether Figure 2 uses cross-hatching to depict a rigid material for any illustrated structural components. Indeed, the left-side leg attachment of Figure 2 shows white dots against black. Id. at Fig. 2. But at the opposite side, the companion leg attachment near “6” does not show the same pattern. Id. Moreover, lid body 9, which is made from a synthetic resin, has no cross-hatching. Id. Further, the pattern presented in the magnified version (provided by Patent Owner) of Figure 2 shows uneven and inconsistent markings at the bottom of water tank 3. Thus, it is unclear whether the identified portion at the tank bottom contains any cross-hatching or intentional markings. Likewise, even if we were to apply purported drafting conventions (e.g., MPEP § 608.02) to a Japanese patent application, the relied upon markings shown in Figure 2 still do not show cross-hatching “with sufficient precision and detail to establish that the subject matter existed in the prior art.” Wasica Finance GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002)).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,545,176
• In-Depth Geophysical, Inc. / In-Depth Compressive Seismic, Inc. v. Conocophillips CompanyRehearing denied
  PTAB · Mar 30, 2020 · IPR2019-00849 · APJ Scott A Daniels · IPR · Rehearing

  The Board denied rehearing and left institution denied for claims 1–6 because Petitioner did not show Li was a printed publication.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “On request for rehearing, the burden of showing a decision on whether to institute trial should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “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.” 37 C.F.R. § 42.71(d). For reasons discussed below, we decline to modify the Decision. Thus, Petitioner’s Request is denied.” slip op. at 2

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

    “It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030).” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “It is Petitioner’s burden to demonstrate at the institution stage a reasonable likelihood that a reference is a printed publication by a preponderance of the evidence. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner presented no additional evidence supporting its contentions, for example from someone familiar with the publication of Li or the referenced web pages, or even an explanation by Petitioner or a declarant that provided a countervailing argument to the SEG process and procedure for publication outlined by Dr. Aminzadeh in his Declaration. Instead, Petitioner simply points to purported “publication dates,” with no substantive explanation or fact witness corroboration. Req. Reh’g (citing Ex. 1020, Ex. 1021, Ex. 1026, Ex. 1030). Although documents indicating a publication date of 1 September 2012 may have relevance, absent additional evidence explaining the origin and meaning of that date as to public accessibility, on the record before us, the date alone fails to show a reasonable likelihood that Li was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it. This is especially true in the face of Dr. Aminzadeh’s unrebutted testimony as to SEG’s regular practices surrounding the acceptance and dissemination of SEG conference papers. While his testimony may not speak directly to a date of public accessibility for Li itself, it is relevant, uncontroverted, and probative of accessibility to SEG papers in general, given the bare “1 September 2012” date relied on by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Petitioner to the extent that Dr. Aminzadeh did not attest to personal knowledge of the Li paper. Dr. Aminzadeh however provided a credible explanation of the process for authoring and presenting papers at the SEG (Society of Exploration Geophysicists) conference. Dr. Aminzadeh is a member and co-author of SEG papers, as well as a former President of SEG. Ex. 2007 ¶ 3. In our Decision, we explained that [w]e give weight to Dr. Aminzadeh’s testimony because it articulates a reasonable and unrebutted explanation for the September 2012 date listed by Researchgate exhibit. Dr. Aminzadeh’s testimony also persuasively explains how and why the dissemination and first public availability of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting from November 4-9, 2012. Dec. 12. We also stated in our Decision that dissemination “of Li would have most likely not occurred prior to the SEG 2012 Annual Meeting” (id.) because, for one reason, Dr. Aminzadeh’s unrebutted testimony is that “[a]uthors submit papers to the SEG several months before the SEG conference. The papers are kept confidential by the SEG at that time.” Ex. 2007 ¶ 4. Although Dr. Aminzadeh does not testify specifically to knowledge of the Li reference, Petitioner has not explained persuasively why this indicates that Dr. Aminzadeh’s testimony as to the SEG confidentiality practices and paper dissemination, as set forth in his Declaration, is inaccurate or misleading.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 9,632,193
• Blackberry Corp. v. Facebook, Inc.Institution denied
  PTAB · Mar 5, 2020 · IPR2019-01596 · APJ Miriam L Quinn · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1 and 3-6 were anticipated by Peinado or obvious over Peinado and McKelvey.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), 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 stated below, we determine that Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to at least one challenged claim. We, therefore, do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “of invention of the ’432 patent “would have had a Bachelors of Science degree in computer or electrical engineering, or equivalent, and 2–3 years of relevant experience working with computer security technology.” Pet. 89. Patent Owner states that “[a] person of ordinary skill in the art . . . would have had approximately the level of education and experience identif[ied] by Petitioner, or a similar level of education and/or experience, with somewhat more education substituting for somewhat less work experience and vice versa.” Prelim. Resp. 4 (citing Storer Decl. ¶ 16). Given the lack of dispute, and for purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, as it is consistent with the level of skill in 5 the art reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 5

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

    “using the same standard used in federal district court, including construing the claim in accordance with the ordinary and customary meaning of the 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 proposes that the term “dedicated security processor” means “a processor dedicated to providing security functions.” Pet. 910. Patent Owner states that in the copending litigation, the parties have agreed to this construction, and, therefore, Patent Owner does not dispute the proposed construction. Prelim. Resp. 45. For purposes of this decision, we adopt the construction of “dedicated security processor” proposed by Petitioner, as stated above, and agreed to by Patent Owner in the co-pending litigation. The remainder of the claim we interpret in accord with the claim’s ordinary meaning to one skilled in the art at the time of invention, in light of the teachings of the specification and the prosecution history, and do not find it necessary to provide any express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6

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

    “correctly notes, Peinado’s DRM system and the rendering application are both implemented on a computing device with a single processor. Prelim. Resp. 13. As stated above in the summary of Peinado, security processor 64 runs DRM system 32p in the portable device to authenticate the digital content downloaded from another computer. Ex. 1004, 37:6266. The same DRM system 32p renders the digital content on the portable device. Id. at 36:5362. The claim requires that the “dedicated security processor” validate the file and user access. The claim also requires that the “dedicated security processor” provide the file to “an other processor” that continues processing the file after the user has been validated. There is no “providing” step in Peinado’s security processor 64 embodiment. The same processor performs both the validating and the processing of the file after validation. Petitioner also points to the disclosure of the decrypted content being provided to the rendering application. See Pet. 19. But that “providing” is (1) not shown occur in the embodiment of security processor 64 and (2) not shown to involve “an other processor.” Pointing to another application receiving the content in a completely different embodiment in Peinado is not sufficient to show that Peinado discloses the limitation. Accordingly, we find that the Petition does not show adequately that Peinado anticipates claim 1 of the ’432 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,228,432
• ZTE USA, Inc. v. Saint Lawrence Communications LLCInstitution denied
  PTAB · Sep 14, 2016 · IPR2016-00705 · APJ Scott C Moore · IPR · Institution

  The Board denied institution on all challenged claims because Ozawa did not show the required comparison of pitch prediction errors across signal paths, and the obviousness grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). We have reviewed the Petition and supporting declaration of Dr. Johnson, and these materials do not contain adequate support for Petitioner’s assertion that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Petitioner asserts that “vector selector 22 selects one of the candidate code vectors and one of the gain code vectors that minimize the distortion [i.e., pitch prediction error].” Pet. 18. Petitioner, however, does not cite persuasive evidence that Ozawa discloses calculating the distortion of a pitch codevector in each of at least two signal paths, or that Ozawa’s vector selector 22 performs a comparison between distortions calculated in at least two signal paths. See Pet. 17–19, 37–40, 58. Petitioner’s declarant, Dr. Johnson, testifies that vector selector 22 performs one type of comparison “during mode 1, 2, or 3,” and a different type of comparison “during mode 0.” See Ex. 1036 ¶ 98 (citing Ex. 1006, 6:21–40). Dr. Johnson, however, does not offer persuasive testimony or evidence that Ozawa discloses a comparison between distortions (i.e., pitch prediction errors) that were calculated in two different modes (i.e., signal paths). See Ex. 1036 ¶¶ 96–101, 145–147. For the reasons set forth above, Petitioner has not made an adequate showing that Ozawa discloses the “a selector for comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 1, or the “comparing the pitch prediction errors calculated in said at least two signal paths” limitation of claim 55. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to independent claims 1 and 55. For the same reasons, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its anticipation challenge to dependent claims 2, 5, 7, 8, 56, 59, and 62, all of which depend from either claim 1 or claim 55. 3.” slip op. at 15

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

    “is . . . used for selecting a single path used for the computation of the codevector distortions” (i.e., the Petitioner-identified pitch prediction error).” Prelim. Resp. 27. “In other words, Ozawa does not calculate pitch prediction errors for subframes for each of the different modes [paths] and select the mode [path] with the lowest calculated pitch prediction error,” as required by independent claims 1 and 55. Id. (emphasis added). On this record, we find Patent Owner’s argument to be persuasive.” slip op. at 14

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

    “Obviousness of Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60 over Ozawa, G.729, and/or Ordentlich Claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60, all depend from either claim 1 or claim 55, and Petitioner’s obviousness arguments regarding these claims all rely on Petitioner’s assertion that Ozawa discloses all limitations of claims 1 and 55. See Pet. 24, 27, 35, 41– 60. Petitioner does not argue that G.729 and Ordentlich individually or collectively cure the deficiencies discussed above in Petitioner’s argument with respect to claims 1 and 55. See id. Accordingly, the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail on its obviousness challenges to dependent claims 6, 10, 11, 14, 15, 17, 28, 29, 32, 33, 35, 37, 38, 41, 42, 44, and 60.” slip op. at 16

  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,260,521
• Unified Patents Inc. v. Olivistar, LLCInstitution denied
  PTAB · Nov 20, 2015 · IPR2015-01216 · APJ Scott C Moore · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on anticipation by Monroe or obviousness over Mangasarian and Walker for any challenged claim.

  RulingsInstitution decision

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

    “1–8, 11–14, 16–23, 29–32, 37, 47, and 48 (Paper 2; “Pet.”) of U.S. Patent No. 7,606,843 B2 (Ex. 1001; “the ’843 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’843 Patent. The Petition is denied.” slip op. at 2

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

    “We agree with Patent Owner’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to the archival of monitoring device data either by an archive server (i.e., a computer), or according to according to computer-executable instructions. See Ex. 1001, 13:10–33, 14:61–15:17, 15:20–47, 16:35–61. In the context of computers and computer systems, the term “archival” ordinarily and customarily refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that” slip op. at 7

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

    “characterized by one or more archival attributes.” Ex. 1001, 13:15–17, 14:65–67. Claims 1 and 29 also require “determining whether the archival profile is associated with one or more archival attributes of the incoming monitoring data,” and if so, “processing the incoming monitoring device data . . . into a compressed format” and “selectively storing the incoming monitoring device data . . . on a storage medium.” Id. at 13:20–29, 15:3–12. Claims 1 and 29 further require that the “archival attribute from which the archival profile selectively stores incoming monitoring device data is one selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” Id. at 13:29–33, 15:13–17. Thus, the “one or more archival attributes” recited in the “determining” step of claims 1 and 29 must be “selected from the group of file type, monitoring device identifier, and monitoring device type that collected the incoming monitoring device data.” slip op. at 11

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

    “We are not persuaded that Petitioner has “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For example, Petitioner does not provide a persuasive explanation of why a skilled artisan would have found it obvious to modify the system and method of Mangasarian to include unique data channel identifiers of the type described in Walker. Petitioner’s argument that “both references are directed to monitoring data on a network and storing such monitoring data for later analysis” (Pet. 44, citation omitted) does not explain why it would have been obvious to make the specific modification that Petitioner proposes. The fact that two references both describe monitoring data on a network and storing such data does not, without more, demonstrate that specific combinations of teachings from these references would have been obvious. Petitioner also has not provided a persuasive explanation of why a skilled artisan would have found it obvious to use unique data channel identifiers of the type described in Walker as an archival attribute that determines whether the data of Mangasarian is selectively stored. Petitioner’s assertion that a “person of ordinary skill in the art would recognize that Walker describes an additional attribute of the monitoring data . . . and would have found it obvious to combine such teachings with the teachings of Mangasarian to selectively collect and archive data based on this specific attribute of the data” (Pet. 44, citation omitted) is conclusory in nature, and is not supported by persuasive evidence or argument.8 For the foregoing reasons, Petitioner has not shown a reasonable likelihood that it would prevail on its obviousness challenge to claims 1 and 29. Dependent Claims 2, 3, 8, 12–14, 16, 17, 21, 22, 29, and 30” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,606,843
• Unified Patents Inc. v. Olivistar, LLCInstitution denied
  PTAB · Nov 20, 2015 · IPR2015-01217 · APJ Scott C Moore · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on its Monroe anticipation or Mangasarian-Walker obviousness challenges to claims 1, 3, 4, 8–12, and 17–20.

  RulingsInstitution decision

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

    “review of claims 1, 3, 4, 8–12, and 17–20 of U.S. Patent No. 8,239,347 B2 (Ex. 1001; “the ’347 Patent”). Patent Owner filed a Preliminary Response (Paper 12; “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” On this record and for the reasons discussed below, we do not institute an inter parties of any claim of the ’347 Patent. The Petition is denied.” slip op. at 2

  • 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’s position that Petitioner’s constructions are overbroad. The challenged claims all relate to a system employs “archival attributes” and “archival profiles” to determine whether to store data in a “data repository,” or a method of “selectively archiving” data that employs “archival attributes” and “archival profiles.” Ex. 1001, 13:11–33, 14:28–46. In the context of computers and computer systems, the term “archival” refers to long-term, persistent storage of computer data.2 In contrast, the term “buffer” ordinarily and customarily refers to memory that temporarily holds information, for example, to account for differences in data flow rates between computer components.3 Similarly, random access memory (“RAM”) is non-persistent memory that temporarily stores data while that data is being processed.4 Thus, the plain and ordinary meaning of 2 See Ex. 3001 (definition from Academic Press Dictionary of Science and Technology, defining “archival storage” as “[s]torage media, such as off-line magnetic tapes or disks, used for long-term storage of data seldom accessed, such as transaction history or backup copies of working programs”); Ex. 3002 (definition from Webster’s New World Computer Dictionary, defining “archive” as “an infrequently used but comprehensive collection of data”). 3 See Ex. 3003 (definition from Webster’s New World Computer Dictionary, defining “buffer” as “a unit of memory given the task of holding information temporarily, especially while waiting for slower components to catch up”); Ex. 3004 (definition from Academic Press Dictionary of Science and Technology, defining “buffer” as “[a]n intermediate storage area used to compensate for differences in rates of data flow when information is being transmitted from one computer device to another”). 4 See, e.g., Ex. 3005 (definition from Webster’s New World Computer Dictionary, defining “random access memory” as “[t]he computer’s primary working memory . . . . In RAM, the CPU can write and read data. Most programs set aside a portion of RAM as a temporary workspace for data so that one can modify (rewrite) as needed until the data is ready for printing or storage on secondary storage media, such as a hard or floppy disk. RAM does not retain its contents when the power to the computer is switched off.”). “archival” does not encompass the storage of data in buffer memory or RAM. This interpretation of “archival” is consistent with the Specification. In particular, the Specification indicates that “archival” data is data that “needs to be maintained for a number of possible uses,” and does not include data that “can be generated, processed, and discarded after its intended purpose.” Id. at 1:20–23. The Specification also provides several examples of “archival” storage, all of which are types of long-term, persistent storage. See id. at 1:26–36 (indicating that archived data may be stored in “storage devices, such as magnetic media and optical media that are directly attached to a computing device generating the data to be archived,” “special-purpose file management server-computing devices [that] function as a storage destination for a number of computing devices,” and “multiple file management servers functioning[] as a storage location for a number of networked computing devices.”). Independent claims 1 and 17 both require selectively storing monitoring device data “if the archival profile is associated with one or more archival attributes.” Ex. 1001, 13:26–33; 14:39–46. For the reasons set forth above, based on the current record, and for purposes of this Decision, we are persuaded that the claim term “archival attribute” does not encompass an attribute relating to the storage of data in buffer memory or RAM, and that the claim term “archival profile” does not encompass a profile relating to the storage of data in buffer memory or RAM. No further construction of these claim terms is necessary at this time. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 6

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

    “processor.” Ex. 1001, 13:16. The fourth element of claim 1 recites that “the monitoring device data processor determines whether the archival profile is associated with one or more archival attributes of the monitoring device data.” Id. at 13:22–24. The final element of claim 1 recites that “the monitoring device data processor . . . selectively stores the monitoring device data in the compressed format on the at least one data repository.” Ex. 1001, 13:11–33. In order to demonstrate anticipation, Petitioner must demonstrate that Monroe discloses “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.” Net MoneyIN, 545 F.3d at 1371. Thus, Petitioner cannot demonstrate anticipation by picking and choosing different “monitoring device data processors” when discussing different elements of claim 1. Instead, Petitioner must identify a “monitoring device data processor” that performs all of the steps recited above. Petitioner fails to do so.” slip op. at 12

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

    “As discussed above, however, we construe “archival attributes” and “archival profiles” to not include attributes and profiles that relate to the storage of data in buffer memory. The Petition also does not provide any persuasive evidence or argument that one of ordinary skill would consider storage of information in packet buffer 208 of Mangasarian to be “archival” storage. Thus, viewing Mangasarian through the lens of Petitioner’s First Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” In the Second Perspective, Petitioner alleges that remote probe 107 is a “monitoring device,” and that the processor of protocol analyzer/host 111 connected to the host network interface is a “monitoring device data processor.” Id. at 27. Petitioner also alleges that the network data packets of Mangasarian correspond to the “monitoring device data” of the claims (see id. at 33), that the class code information for data packets corresponds to the “archival attributes” of the claims (id. at 34), and that the filter, classification, and upload routines of Mangasarian correspond to the “archival profiles” of the claims (id.). Petitioner alleges that host 111 (i.e., the monitoring device data processor) uses the class code information (i.e., archival attributes) and upload routines (i.e., the archival profile) to “enable intelligent selection of portions of packet buffer to be downloaded” to host 111. 35 (citing Ex. 1004, 6:3–5; Jawadi Decl. ¶¶ 78–79, 95, and Ex. B cl. 1(b))). Petitioner also asserts that the processor of host 111 “includes sufficient memory and mass storage to store and manipulate the portions of packet buffer 208 that are downloaded for analysis.” Pet. 35 (citing Ex. 1004, 6:15–26, 4:61–65; Jawadi Decl. ¶¶ 75, 78, 81, 95, and Ex. B cl. 1(b) & 1(e)). But Mangasarian makes clear that the filter, classification, and upload routines are software that executes on remote probe 108. See Ex. 1004, 5:5, 5:16–33, 5:66–6:13, Fig. 2. Petitioner has not pointed to any description in Mangasarian of filter, classification, and upload routines that control how or where host 111 stores data. See Pet. 40. Petitioner merely alleges that the “upload routines” of Mangasarian cause network data packets to be uploaded to host 111. The uploading of data to host 111 may cause data to be stored in the “working memory (e.g., random access memory or ‘RAM’)” of the host. See Ex. 1004 at 2:17–19, 6:23–31. Petitioner, however, does not allege that this uploading would cause data to be stored in the separate “mass storage” of host 111. Thus, viewing Mangasarian through the lens of Petitioner’s Second Perspective, we are not persuaded that the reference teaches an “archival attribute” or “archival profile.” For the foregoing reasons, Petitioner has not shown a reasonable” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,239,347

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.