- International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-00970 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1, 5, 25, 26, 30, and 50 because the Fintiv factors favored discretionary 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, 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.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” 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 an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“provided compelling evidence to support its contention that Bossemeyer, alone or in combination with Merenda, teaches “permitting full or partial reconstruction of said data with corresponding extracted data and remainder data after accessing said respective extract stores” recited in claims 1 and 29.5 5 In view of this determination, we do not need to address Patent Owner’s additional argument that Bossemeyer is not analogous art to the ’482 patent. Prelim. Resp. 16–24. Similarly, we do not need to address Patent Owner’s additional argument that a person of ordinary skill would not have found it obvious to combine Merenda with Bossemeyer. Prelim. Resp. 50–61.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,552,482 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 7,958,268 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 11,201,500 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 11,201,500 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01091 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 3, 9, 11–13, and 20, 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 fintivInstitution denied
“We agree with Patent Owner’s analysis based on the schedule set by Judge Gilstrap. The fact that the time-to-trial statistics cited by Petitioner predict an even earlier trial date than that set by Judge Gilstrap merely confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 86–87; Prelim. Resp. 18 (timeline).5 We find that this factor favors exercising our discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the Petition does not present compelling evidence that Okada, alone or in combination with the other references cited by Petitioner, teaches or suggests claim limitation [1.k]. The operation described by Okada and relied on by Petitioner does not “periodically receive information corresponding to one or more output voltages or currents of the one or more receiver rectifier circuits via the one 9 Petitioner also provides an annotated version of this figure in connection with its analysis of this limitation. See Pet. 61. or more primary coils and the one or more sense circuits,” nor does it “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” as recited in limitation [1.l]. Instead, the output current in Okada is determined in steps 6–12 of the flowchart in Figure 3, where the receiver transmits and the transmitter receives power consumption information derived from a code stored on the device being charged. Prelim. Resp. 37– 38; 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. 38. We agree with Patent Owner that in Okada, “there is no periodic receipt of power information of any type, let alone information corresponding to the output voltage or current of the receiver rectifier circuit.” Id. (emphasis omitted).” slip op. at 30
- 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
- Parallel petitionsNot reached
“1 Consistent with the Board’s practice for handling parallel petitions Petitioner filed a Notice Regarding Multiple Petitions (Paper 3, “Notice”). See Consolidated Trial Practice Guide (November 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated.) In the Notice, Petitioner states that “[t]here was no practicable way to fit the challenges in a single petition” due to the length of the claims and the “substantially different features” in the dependent claims. Notice 3. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a), in view of our assessment of the merits, we do not reach that issue here. 2 Those fifteen additional petitions are the following: (1) IPR2023-01086, (2) IPR2023-01087, (3) IPR2023-01088, (4) IPR2023-01089, (5) IPR2023- 01090, (6) IPR2023-01094, (7) IPR2023-01095, (8) IPR2023-01096, (9) IPR2023-01097, (10) IPR2023-01098, (11) IPR2023-01099, (12) IPR2023- 01100, (13) IPR2023-01101, (14) IPR2023-01102, and (15) IPR2023- 01124.” slip op. at 3
Discretionary denialcites KSR · GrahamPatents in suitUS 11,201,500 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · 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 · GrahamPatents in suitUS 7,349,987 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00971 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims 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
“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. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have jurisdiction under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” 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 an inter partes review.” slip op. at 2
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Furthermore, we are not persuaded that Dr. Zadok’s testimony provides compelling evidence that this limitation is met by Bossemeyer. See Ex. 1003 ¶¶ 194–211. We agree with Patent Owner that much of Dr. Zadok’s testimony is based on assumptions that he does not support with facts. Prelim. Resp. 34–41. For example, he testifies, without factual support, that “[t]he system of Bossemeyer retrieves remainder data (e.g., public information such as a customer’s name), retrieve [sic] extracted data (e.g., proprietary or limited access information such as credit card numbers and account PIN/numbers), and then logically merges these pieces of information (i.e., reconstruct the original information to appear as before it was split into different security categories).” Ex. 1003 ¶ 207 (emphases and color coding omitted). Dr. Zadok provides no citation to Bossemeyer, and we see no disclosure that Bossemeyer’s system “logically merges” public information, such as a customer’s name, with proprietary or limited access information, such as credit card numbers and account PIN/numbers. Id. Dr. Zadok even admits that “Bossemeyer does not explicitly state that the ¶ 208. Nevertheless, he speculates (without support) that “a [person of ordinary skill in the art] would have understood that such logical merging would have been obvious to take place for the (secure) transaction to succeed.” Id. Similarly, we are not persuaded by Dr. Zadok’s testimony, referring to an example from Bossemeyer involving access to medical data (Ex. 1005, 5:6–15), that “Bossemeyer discloses permitting reconstruction of some of a user’s medical data (e.g., data including the user’s medical alerts 212, and insurance and prescription information 214) and permitting reconstruction of all of user’s data (e.g., data further including the user’s medical history 216) with additional authorization.” Ex. 1003 ¶ 210 (emphases and color highlighting omitted). We find that Dr. Zadok’s testimony is speculative, hindsight-biased, and unsupported by Bossemeyer, which does not disclose or suggest any such logical merging of data. See, e.g., Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”). See Ex 2004 ¶¶ 47–56 (challenging Dr. Zadok’s assumption of merging data in Bossemeyer).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill would have “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience “[l]ess professional experience can be substituted by additional education and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 112–113). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,721,344 - International Business Machines Corporation v. Digitaldoors, Inc.Institution deniedPTAB · Dec 1, 2023 · IPR2023-00967 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claim 81 because the Fintiv factors favored denial and the Petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“compelling-merits question requires a higher standard of proof, ‘highly likely to prevail,’ than the statutory standard for institution, ‘reasonably likely to prevail.’” Prelim. Resp. 48. Patent Owner asserts that the Petition is deficient because Bossemeyer is not analogous art to the ’825 patent. Id. at 2, 16–23. Patent Owner contends also that Bossemeyer and Glick fail to teach the claimed “extracted data” and “reconstruction” claim elements discussed infra. Id. at 2, 23–41. Finally, Patent Owner contends that Petitioner fails to provide sufficient motivation to combine Bossemeyer and Glick. Id. at 42–47. slip op. at 19
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 35 (“Specifically, in Bossemeyer, user data is partitioned, e.g., extracted, into limited access information and/or proprietary information, and public information.”) (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 imply or suggest extraction.” Easttom Decl. ¶ 29. As Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). construction (Pet. 11) and Patent Owner’s choice not to state its position on claim construction. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,313,825 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 1, 2023 · IPR2023-00968 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution on claims 1, 2, 10, 15, 16, 19, 33, 34, 42, 47, 48, and 51, citing Fintiv and finding no compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner’s analysis based on the most recent time- to-trial statistics and the schedule set by Judge Gilstrap. We are not persuaded by Petitioner’s argument based on out-of-date data. We find that this factor favors exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. For the reasons given, Petitioner’s arguments and evidence do not present a “compelling, meritorious challenge.” In view of this determination, we do not need to address Patent ’047 patent or that there is insufficient motivation to combine Bossemeyer and Merenda.” slip op. at 27
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,322,047 - Cisco Systems, Inc. v. Monarch Networking Solutions LLCInstitution deniedPTAB · Mar 31, 2021 · IPR2020-01678 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR for claims 1–10 under § 314(a), finding that the Fintiv factors favored denial because the district court trial was near and the litigation was substantially advanced.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“Section 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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. Under § 314(a), we have discretion to deny institution of an inter partes review. Cuozzo, 136 S. Ct. at 2140. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding, specifically 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.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The current trial date in the District Court Litigation is June 7, 2021, which is approximately ten months before the projected statutory deadline for a final written decision in this case. Reply 2; Sur-reply 3; Ex. 2012, 1. Although there is some uncertainty regarding the trial date in the District Court Litigation, it does not outweigh the substantial gap between the trial date and the final written decision deadline.” slip op. at 7
Discretionary denialPatents in suitUS 8,451,844
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.