• Toyota Motor Corp. / Kia Copr. v. Emerging Automotive LLCInstitution denied
  PTAB · Nov 21, 2024 · IPR2024-00785 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Zaid disclosed or taught the claimed vehicle-unlocking request, for claims 1–7, 10–15, and 18–20.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24

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

    “We agree with Patent Owner that Petitioner reads Zaid’s reservation for a vehicle as providing “access” to said vehicle too broadly. Zaid discloses that (1) when a reservation is received, (2) vehicle access is provided, and (3) then “once vehicle access is provided, the user can send commands from the wireless communication device to a vehicle access control component coupled to the vehicle to accurate various vehicle functionalities, such as open the vehicle door, tum on the engine, and/or otherwise allow the user to use the vehicle.” Ex. 1005 ¶ 124. We understand this disclosure to mean that Zaid provides a separate command for unlocking the doors, which occurs after the vehicle is reserved. See id. Thus, we find that reservation request is different than and separate from the request for unlocking the reserved vehicle. Petitioner, however, does not identify Zaid’s command for unlocking the doors as the claimed “request” for unlocking the vehicle. See Pet. 29–31.” slip op. at 24

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

    “Additionally, Petitioner specifically argues that Zaid discloses this limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124). Thus, after review of the arguments and evidence, we find that Petitioner has not provided sufficient explanation and supporting evidence that Zaid discloses or teaches “a request from the mobile device for unlocking of the vehicle” as required by limitation [1e]. Accordingly, based on the current record, we determine that Petitioner has failed to establish a reasonable likelihood that it would prevail in showing that independent claim 1 is anticipated by or rendered obvious in view of Zaid.” slip op. at 25

  • Expert testimonyDecided for patent owner

    “limitation. Pet. 28. Petitioner does not argue that this limitation is rendered obvious by Zaid. Id. Yet, even if Petitioner were to argue that this limitation would have been obvious to an ordinarily skilled artisan in view of Zaid, we would disagree because Petitioner has failed to show how the unlocking step would have been obvious in view of a reservation. This is especially true given that Zaid identifies these as two different steps in its process. See Ex. 1005 ¶ 124. We specifically credit the testimony of Dr. Malek that a “POSITA would understand from Zaid that any request for unlocking of a vehicle would be separate from and only occur after the vehicle is reserved” and that “Zaid further discloses that instructions for the car function, such as unlocking doors, is received through direct commands—not the separate request for reservation.” See Ex. 2001 ¶ 48 (citing Ex. 1005 ¶¶ 100, 124).” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,407,026
• Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution denied
  PTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined 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.” 35 U.S.C. § 314(a) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11

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

    “Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. See 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))).” slip op. at 13

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

    “We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,265,096
• Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.Institution denied
  PTAB · Mar 22, 2024 · IPR2023-01415 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–17 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a)—FINTIV Patent Owner argues that, in view of the parallel litigation in Texas, the Board should discretionarily deny institution of an inter partes review under 35 U.S.C. § 314(a) pursuant to Fintiv. Prelim. Resp. 38–40; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (setting out six nonexclusive factors that the Board may” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical or computer engineering, or a related field, and at least two years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a master’s degree in electrical engineering, computer engineering, computer science, or a similar field. Pet. 5 (citing Ex. 1003 ¶ 34). Patent Owner states that, “[f]or purposes of this Preliminary Response only, Patent Owner does not dispute the Petitioners’ definition of a person of ordinary skill in the art.” Prelim. Resp. 2. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner does not propose an explicit claim construction for any term, asserting that, “[u]nless otherwise specified, the terms should receive their respective plain and ordinary meaning as understood by a person of ordinary skill in the art.” Pet. 6. Patent Owner argues that “nowhere else do Petitioners even mention claim construction, much less provide a proposed construction for any term of the ’383 patent.” Prelim. Resp. 12. Rather, according to Patent Owner, “the Petition repeatedly cites to Patent Owner’s infringement contentions from a related district court proceeding to set forth what Petitioner then intuits Patent Owner’s constructions for claim terms would be.” Id.; see id. at 16 (Patent Owner asserting that “[t]he Petition relies on citations to Patent Owner’s infringement contentions no less than 68 times for its challenge to all Challenged Claims, and for all Grounds.”). Patent Owner further argues that Petitioner does not indicate whether it agrees with, proposes, or adopts the constructions attributed to Patent Owner, and therefore has failed to set forth how the challenged claims are to be construed, as required under 37 C.F.R. § 42.104(b)(3). See id. at 12–17. For the reasons set forth below, we determine that Petitioner has not met its burden on its challenges as articulated by Petitioner. We need not reach any claim construction issues to make that determination. Accordingly, on this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,099,383
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Feb 14, 2024 · IPR2023-01390 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Piccard was disqualified under pre-AIA § 103(c)(1), leaving neither asserted obviousness ground likely to establish claims 1–14 as unpatentable.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. Petitioner asserts that Piccard qualifies as prior art under pre-AIA § 102(e). Pet. 4 (“Piccard . . . is prior art under pre-AIA § 102(e) because it was filed on June 30, 2005, before the earliest possible priority date of the ’243 patent.”). Piccard cannot qualify as prior art under § 102(a) or § 102(b), as Piccard published January 4, 2007, which is after the ’243 patent’s April 20, 2006 filing date. Ex. 1007, code (43); Ex. 1001, code (22). Therefore, Piccard could qualify as prior art only under § 102(e) and may be subject to disqualification under § 103(c)(1). Cf. Unified Patents, Inc. v. Uniloc Luxembourg S.A., IPR2017-02148, Paper 9 at 19–20 (PTAB Apr. 17, 2018) (determining that a reference was not disqualified under § 103(c)(1) because it qualified as prior art under § 102(a) and therefore was not “prior art only under one or more of subsections (e), (f), and (g) of section 102”).” slip op. at 6

  § 102 anticipation
  Patents in suitUS 8,201,243
• Ao Kaspersky Lab v. Open Text Inc.Institution denied
  PTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.

  RulingsInstitution decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8

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

    “For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10

  § 102 anticipation
  Patents in suitUS 10,284,591
• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Nov 27, 2023 · IPR2023-00840 · APJ Iftikhar Ahmed · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable, principally because Cousins did not disclose the claimed discrepancy identification.

  RulingsInstitution decision

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

    “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). Based on the information presented in the Petition and the supporting evidence, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the challenged claims as set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 9

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

    “Petitioner and Patent Owner propose constructions for certain claim terms. See Pet. 13–14, 25; Prelim. Resp. 8–12. To the extent necessary, we address some of these arguments as part of our unpatentability analysis below. See infra § III.E.1.c. We, however, determine that no claim terms require express construction. See 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))).” slip op. at 10

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

    “to the selected scraping strategy,” i.e., identifying a discrepancy between two requests. And, as discussed further below, because Petitioner’s contentions as to Cousins’s disclosure are based on Petitioner’s incorrect interpretation of this claim limitation, Petitioner fails to persuade us that Cousins teaches or suggests this claim limitation. Petitioner first relies on Cousins’s disclosure of “two separate received requests where both requests are for the same target site” and Cousins’s teaching to combine those two requests into a single crawl request. Pet. 26 (citing Ex. 1004, 11:17–24). Petitioner fails to explain how this relates to identifying discrepancy between a request and a scraping strategy. As Patent Owner points out, if anything, this disclosure teaches looking for similarities rather than discrepancies between the two requests. After all, Cousins teaches “coalescing multiple requests from different requests sources 136 for similar data into a single crawl, . . . provid[ing] lower overhead, lower latency, and globally higher throughput, [and decreasing] the crawling burden on the target site 128.” Ex. 1004, 11:27–30. No aspect of this disclosure relates to identifying discrepancies or differences.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,965,770
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00732 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).8 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’932 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

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

    “reasonable likelihood that Li was publicly accessible before the priority date of the ’932 patent. In particular, we determine that Petitioner has not shown a reasonable likelihood that Li “has been disseminated” or that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI, 511 F.3d at 1194. As an initial matter, Li is undated. We can find no indication anywhere in Li itself evidencing a timeframe in which it might have been published, not even a copyright date. There is also no indication in Li of any journal or website where Li may have been published. Dr. Hall-Ellis testifies that Li “appears beginning on page 12” of, purportedly, a record of the 12th International Conference on Telecommunication Systems: Modeling and Analysis, but the copy of Li submitted by Petitioner starts on page “1” and includes no further pages describing any conference. See Ex. 1009 ¶ 40; Ex. 1005, 1. Ultimately, there is nothing in the text of Li itself to distinguish Li from a draft paper that was never published. Petitioner submits no evidence that Li was disseminated at or around the time of the 12th International Conference on Telecommunication Systems: Modeling and Analysis. See Medtronic, 891 F.3d at 1381. Dr. Hall-Ellis testifies that Li was “presented” at the conference but submits no evidence in support of this assertion. Ex. 1009 ¶ 43. For example, Dr. Hall-Ellis does not address “whether the copies were freely distributed to interested members of the public” or whether there was a “legal obligation of confidentiality” when distributing any copies, among other factors. See Medtronic, 891 F.3d at 1381. Absent any such evidence, we conclude that Petitioner has not shown dissemination of Li at or around the time of the conference, or at any other time before the ’932 patent’s asserted priority date. Petitioner also does not sufficiently establish that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI Int’l, 511 F.3d at 1194. Dr. Hall-Ellis’s testimony is deficient because her testimony does not establish that Li was likely made available to the public before the critical date of the challenged patent. See Hulu, Paper 29 at 16. For example, Dr. Hall-Ellis does not claim personal knowledge of when Li was first published, was unclear as to when she obtained Li from the OPERA digital repository, and unpersuasively asserts that Li “is” available from other digital repositories. See Prelim. Resp. 32–33; Ex. 1009 ¶¶ 40–41. Whether Li “is” available online now does not establish that Li was publicly accessible in the relevant timeframe, i.e., 17 years earlier, prior to the April 20, 2006 priority date of the ’932 patent. Further, Dr. Hall-Ellis presents no persuasive evidence that the identified digital repositories hosted Li in the relevant timeframe. Patent Owner persuasively asserts that ResearchGate was established in 2008, after the priority date, and that Google Scholar’s page referencing Li links to ResearchGate. Prelim. Resp. 33–34 (citing Ex. 2014 (“We started ResearchGate in 2008 . . . .”); Ex. 1009 ¶ 41; see also id. n.23 (Google Scholar link, showing “[PDF] from researchgate.net”). Accordingly, these repositories do not support Dr. Hall-Ellis’s testimony that Li was publicly available in the relevant timeframe, before April 20, 2006. Dr. Hall-Ellis’s reliance on the CiteSeer repository is also unavailing because Dr. Hall- Ellis’s link to CiteSeer directly opens a PDF file of Li and does not provide any evidence showing that CiteSeer hosted Li in the relevant timeframe. See Ex. 1009 ¶ 41 n.24.” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,719,932
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00731 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • BurdenDecided for patent owner

    “therefore, “the Board [will] not consider[] these hyperlinked webpages as evidence in [this] proceeding[].” Ex. 3001. As a result, Dr. Hall-Ellis’s declaration does not cite any supporting evidence of record in this proceeding (other than Li itself, Ex. 1005). Ex. 1009 ¶¶ 40–43. The declaration thus “does not disclose the underlying facts or data on which the opinion is based” and is therefore “entitled to little or no weight.” See 37 C.F.R. § 42.65(a). For this reason alone, we find that Petitioner has failed to establish the public accessibility of Li.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).7 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 22–23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’243 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 8,201,243
• Bright Data Ltd. v. Metacluster LT, UabInstitution denied
  PTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

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

    “(a) THRESHOLD.—The 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” slip op. at 2

  • Skill levelSkill level board ownOther

    “Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11

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

    “construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,601,948
• Polygroup Limited (Mco) v. Willis Electric Co., Ltd.Institution denied
  PTAB · Apr 13, 2017 · IPR2016-01783 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Fevre, Fevre and Hodges, or Mills and Fevre rendered any challenged claim unpatentable.

  RulingsInstitution decision

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Furthermore, on the record before us, we are not persuaded by Petitioner’s contentions that the preambles of independent claims 1 and 14 are not limiting. Pet. 18–19. Instead, we are persuaded by Patent Owner that the “artificial tree assembly” element in the preamble provides necessary context at least for the term “trunk portion.” Prelim. Resp. 15. In particular, recitation of “artificial tree assembly, comprising” in the preamble of each of independent claims 1 and 14 provides necessary context that the term “trunk” in the body of the claim is part of that artificial tree, and not, for example, a piece of luggage. We also are persuaded by Patent Owner that it should not be bound by its infringement contentions in the companion district court lawsuit, at least because consistent with Patent Owner’s contentions (Prelim. Resp. 12) the accused objects appear to be artificial trees (Ex. 1017, 3, 17).” slip op. at 8

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

    “With respect to the second of Patent Owner’s proposed constructions, our prior determination addresses the broadest reasonable interpretation of “coupling mechanism,” to the extent needed for the purposes of this Decision. In particular, Patent Owner’s proposed construction is, in part, that the “coupling mechanism” is “for joining two trunk portions.” Prelim. Resp. 23. Independent claims 1 and 14 recite expressly joining the “coupling mechanism” to the “trunk portion” in a manner set forth in more detail in the claims. 4. Conclusion Accordingly, based on the record before us in the instant proceeding, we agree with Patent Owner (id. at 21) and determine that the broadest reasonable interpretation of “trunk portion” in light of the ’617 Patent Specification is “a section of the main stem of an artificial tree assembly.” In light of that determination, we need not make a further determination regarding the preamble except as set forth above. We also determine no other express construction of “coupling mechanism” is needed to resolve a dispute in this proceeding. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)).” slip op. at 9

  • Skill levelOther

    “B. Person of ordinary skill in the art Petitioner proposes that a person of ordinary skill in the art had: (1) a degree in mechanical engineering or an equivalent degree; (2) a minimum of one or two years of experience in mechanical engineering, general engineering, or general manufacturing and design arts; and (3) general knowledge of engineering or manufacturing and design that would include an understanding of techniques and structures for interconnecting tubular components. Pet. 18 (citing Ex. 1003 ¶ 18). Patent Owner offers a similar description: A person having ordinary skill in the art during the relevant timeframe would have been a person with at least one to two years of experience in designing artificial trees. Prelim. Resp. 19. Patent Owner contends that “Petitioner suggests a higher level of skill, including the requirement of an engineering degree.” Id. (citing Pet. 18). For the reasons set forth below, we reach the same decision regardless of whether the skilled artisan had an engineering degree. We, therefore, see no reason to choose one over the other. We also consider the level of skill implied by the disclosures of the prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 9,066,617

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.