• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “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). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19

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

    “1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10

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

    “geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,441,752
• Google LLC v. Security First Innovations, LLCInstitution denied
  PTAB · Jun 6, 2024 · IPR2024-00213 · APJ Daniel Kazhdan · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–10 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “inter partes review, see 35 U.S.C. § 314, and she delegated that authority to the Board. See 37 C.F.R. § 42.4(a). The Board may not authorize an inter partes review unless the information in the petition and the 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.” 35 U.S.C. § 314(a). We determine that the Petition in this case does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use. A higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶ 40). The Preliminary Response does not provide a description of the person of ordinary skill in the art or dispute Petitioner’s description. Patent Owner’s expert “accept[ed] Dr. Bhattacharjee’s proposed qualifications of a [skilled artisan]” for purposes of his declaration. Ex. 2003 ¶ 20. For purposes of assessing institution, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding. C. Claim construction slip op. at 7

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

    “The Preliminary Response argues that limitations [1A] and [1B-2] “require storing two or more shares generated from a dataset on two or more physical storage devices.” Prelim. Resp. 5. This, purportedly, is “a central feature” of the invention. Id.; see generally id. at 4–7. The relevant limitations recite: “[1A] a plurality of physical storage devices storing thereon a plurality of shares, the plurality of shares being associated with at least one session key used to secure a dataset” and a secure storage system configured to “[1B-2] generate the plurality of shares for storage on the plurality of physical storage devices by performing a securing operation on the dataset received from the client device and distributing the dataset in the shares.” See Ex. 1001 98:3–6, 98:12–15. As the Preliminary Response notes, the Federal Circuit has repeatedly held that “‘a plurality of’ means ‘at least two of.’” SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir. 2021) (citing cases); Prelim. Resp. 5. As the Preliminary Response further notes, the Petition itself seems to interpret the claims as requiring storage on at least two physical storage devices. Prelim. Resp. 7. Specifically, the Petition argues that “Dickinson-Takeda . . . stores encryption results . . . on at least two of storage devices D1-D4.” Id. (quoting Pet. 68); see Ex. 2003 ¶ 19. Implicit in this is the need for at least two separate physical storage devices. Thus, we conclude that the claims require storing the shares among two or more physical storage devices.” slip op. at 9

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

    “this decision we construe limitations [1A] and [1B-2] together to require storing two shares among at least two physical storage devices. Petitioner never addresses this requirement, and we find this to be a fatal flaw. According to Petitioner, Takeda teaches limitations [1A] and [1B-2] as follows: “Takeda’s technique involves dividing plaintext – which is any non-encrypted (i.e., unciphered) information – into blocks, ciphering different blocks using different ‘ciphering attributes’ (e.g., ciphering keys and/or ciphering algorithms), and outputting the ciphered blocks with the ciphering attributes.” Pet. 10; see generally id. at 10–16, 28–31, 39–40. Patent Owner responds that “Takeda’s blocks are stored together in a single storage device,” and this does not disclose or suggest storing the shares on at least two physical storage devices. Prelim. Resp. 8; see id. at 8–9 (citing Ex. 2003 ¶¶ 51–53). We agree with Patent Owner. Petitioner has not shown a reasonable likelihood that Takeda discloses or suggests storing data on physically separable storage devices. The Petition points to Takeda’s teaching that the data is “divided into blocks.” Pet. 11. As Patent Owner notes, Takeda teaches that these blocks are all stored on a single, physical device. Prelim. Resp. 8. Specifically, Takeda teaches that “[t]he ciphertext is stored in the removable recording medium 39 or the storage device 37.” Ex. 1008 ¶ 92.5 We determine that Takeda does not teach or suggest storing this data in at least two separate media, at least two separate storage devices, or at least one of each. Correspondingly, Takeda’s Figures show data blocks next to each other—i.e., on one physical device. See id. at Figs. 1–4. The Petition does not suggest that Ophir teaches storing shares among different physical storage devices. As the Petition itself notes, Ophir seems to use a single “mediator [to] provide[] secure virtual storage to data clients.” Pet. 9 (quoting Ex. 1007 Abstract) (emphasis omitted).” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,338,140
• Manufacturing Resources International, Inc. v. Samsung Electronics Co. Ltd.Institution denied
  PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11

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

    “disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Jan 11, 2024 · IPR2023-00972 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution of IPR challenging claims 31, 36, and 41, exercising § 314(a) discretion under Fintiv because the merits were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution. we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 11

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

    “Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set). Id. ¶ 49 (emphasis added). Petitioner presents no compelling argument that Merenda’s disclosure of storing data entered in fields pre-designated as “private” separately from data entered in fields pre-designated “public” discloses or suggests the extracting step.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience working in the field of data storage systems and data security as of November 13, 2000.” Pet. 6 (citing Zadok Decl. ¶¶ 114, 115). Petitioner adds that “[l]ess professional experience can be substituted by additional education, and vice versa.” Id. Patent Owner chooses not to state a position on this issue. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art as it is consistent with the art before us.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1006 ¶ 23 (emphasis added). It does not appear that Petitioner is relying on Merenda’s “sophisticated” notion of data parsing to teach or suggest the extracting limitation. See Pet. 31 (quoting from Merenda paragraph 23, describing only “simplistic” parsing). In any event, we agree with Patent Owner that “[t]his more sophisticated version of ‘parsing’ doesn’t remove anything, it combines data fields.” Prelim. Resp. 34; Easttom Decl. ¶ 55. Merenda’s “simplistic” version of parsing fares no better. Prelim. Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set).” slip op. at 19

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,958,268
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01092 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution for claims 23–31 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 18

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

    “the Fintiv factors. As discussed above, we have determined that factors 1–5 weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling evidence of unpatentability under factor 6. We therefore conclude that the evidence of record favors exercising our discretion to deny institution of an inter partes review. V. CONCLUSION Upon consideration of the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and the accompanying evidence, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 23–31 of the ’500 patent. VI. ORDER For the foregoing reasons, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 41

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

    “device.” Instead, the output current in Okada is determined in steps 6–12 of the flowchart, where the receiver transmits and the transmitter receives power consumption information derived from a code stored on the device being charged. Prelim. Resp. 28–29; Ex. 1005 ¶¶ 69–73. The transmitter adjusts the power to one of three levels, a one-time selection that remains for the duration of the charging. Prelim. Resp. 28–29. We, therefore, do not find compelling evidence that Okada meets this claim element. Nor are we convinced by Petitioner’s “modifications” to Okada. Pet. 58 (referring to annotated Fig. 3). In Petitioner’s modified Okada system, the receiver circuit would “periodically communicate information corresponding to an output voltage or current of the receiver rectifier circuit to cradle 4.” Id. (emphasis omitted). Petitioner points to the testimony of its expert, Dr. Baker. Id. (citing Baker Decl. ¶ 210). We do not find that there is compelling evidence that Okada’s “carrier wave” would have enabled cradle 4 to ‘regulate in a closed loop manner the output voltage or current of the receiver rectifier circuit during the charging or powering of the portable device.’” Id. (emphasis omitted). We find Dr. Baker’s testimony confusing and, ultimately, not compelling. Instead of setting forth his support for his opinion, he incorporates by reference over 100 pages of his prior testimony. See Baker Decl. ¶ 210 (incorporating prior analysis for limitations 23(a)- 23(h) in Sections IX.A.1(a)–1(h) and analysis and discussions in Sections VIII.A–E). Patent Owner cites several instances of this lack of particularity in the Petition, and we agree. See Prelim. Resp. 22–25. Dr. Baker’s testimony similarly lacks focus and deprives us of a fair opportunity to assess the basis for his testimony. Our Consolidated Trial Practice Guide (Nov. 2019)9 provides the following guidance on presenting cases and warns against lack of focus: Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented, and can otherwise cause meritorious issues to be missed or discounted. Thus, parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record. Id. at 39 (emphasis added). Petitioner has failed to follow this guidance throughout its presentation. As a consequence, we find it difficult to discern compelling evidence in Petitioner’s argument for why Okada should be modified to provide closed-loop operation.” slip op. at 31

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

    “required by the claim would require the transmitter to regulate. But the Okada drive circuit . . . as described is not designed for this type of regulation.” Prelim. Resp. 30. As Patent Owner explains, “Okada teaches simply choosing one of three power levels through the use of a multi-tapped primary side coil.” Id. Modifying Okada would require “additional circuitry and control mechanisms required for closed loop regulation.” Id. Petitioner fails to provide compelling evidence that a person of ordinary skill would have modified Okada’s open-loop circuitry and controls employing a multitap helical coil, described supra, for closed-loop operation such as that disclosed in Berghegger, which operates on entirely different principles. We are not convinced that Petitioner provides a sufficiently compelling motivation to import closed-loop operation into Okada’s open-loop system. The Supreme Court has warned against “slipping into use of hindsight.” KSR, 550 U.S. at 421(quoting Graham, 383 U.S. at 36). In this regard, the Federal Circuit has said that “combinations that change the basic principles under which the [prior art] was designed to operate, . . . may fail to support a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 758 (Fed. Cir. 2015) (quoting In re Ratti, 46 CCPA 976, 270 F.2d 810, 813 (1959), In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (internal quotation marks and cites omitted) (alterations in original). For the reasons given, we are not persuaded that Petitioner presents a compelling reason to modify Okada for closed-loop operation in the manner suggested by Dr. Baker.” slip op. at 33

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Dec 5, 2023 · IPR2023-00969 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 6, 9, 10, 11, 15, 16, 21–23, and 27, finding Fintiv factors favored denial and the petition lacked compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 8

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “We do not see compelling evidence from Petitioner that the extracting/parsing data limitation is taught or suggested by Bossemeyer. As discussed supra, in Section II.C, the ’987 patent discloses extraction occurring as an initial step in which a filter removes or extracts security-sensitive data from a data object prior to storage. See Ex. 1001, 19:45–49, Fig. 1A. In contrast, Bossemeyer discloses a “partitioned” memory (see Fig. 3, reproduced supra in Section II.E.1), but does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data and remainder data. See Easttom Decl. ¶ 29 (“Bossemeyer is entirely silent as to where the information stored in the central server comes from, the form it takes before it gets to the central database server, or how the different pieces of information end up in the different partitioned areas of memory.”). Petitioner points to no disclosure or suggestion that the “proprietary” and “limited access” information in Bossemeyer’s database has been filtered or separated from the “public” information, so as to result in “extracted data” and “remainder data,” as recited in the challenged claims.” slip op. at 22

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 24 (“Bossemeyer partitions or separates (e.g., extracts), user data into subsets of extracted data, e.g., limited access information and/or proprietary information, and remainder data, e.g., public information.”) (emphases and color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id. Petitioner argues that, to the extent Bossemeyer does not explicitly disclose “extracting data,” a person of ordinary skill would have understood that, when Bossemeyer’s central data base server “partitions” user information in terms of accessibility, Bossemeyer teaches “separating sensitive information from user data.” Pet. 27 (citing Ex. 1005, 2:17–20). We find the reference in Bossemeyer to “partitions” is not a compelling disclosure of extracting, e.g., filtering or removing, security sensitive data from a data object prior to storage. We agree, instead, with Dr. Easttom, that this disclosure in Bossemeyer is “merely referring to the act by the memory partitions of keeping different pieces of information separate from each other, not removing some pieces of data from a larger whole.” Easttom Decl. ¶ 32. He concludes that “[a person of ordinary skill] would have understood that the extracting/parsing process of the ’987 Patent is vastly different than the act of ‘partitioning’ either as used in Bossemeyer or as used in the art at the time.’” Id. ¶ 34.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,349,987
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows 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 has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached

    “In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,010,330
• Netskope, Inc. v. Fortinet, Inc.Institution denied
  PTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution

  The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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 evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8

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

    “B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a 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.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9

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

    “3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 9,231,968
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00432 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because neither obviousness ground showed a reasonable likelihood of proving claims 1–4, 8–11, and 13–16 unpatentable.

  RulingsInstitution decision

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

    “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 that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’823 patent.” slip op. at 2

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

    “We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Petition as to why one of skill in the art would opt to reconfigure Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “We have reviewed the motions and the documents at issue and have considered the explanations of the confidential nature of the materials for which sealing is sought. We find there is good cause and therefore we grant the motions to seal and the associated request to enter the protective order.” slip op. at 30

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,754,823

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.