• Ens Labs Ltd. v. Unstoppable Domains Inc.Institution denied
  PTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.

  RulingsInstitution decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8

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

    “Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8

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

    “of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20

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

    “that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 11,558,344
• 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
• Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution denied
  PTAB · Jun 20, 2024 · IPR2024-00339 · APJ John R Kenny · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claim 12 was obvious over any of the four asserted prior-art combinations.

  RulingsInstitution decision

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

    “The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to claim 12. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has not met this standard and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Skill in the Art Petitioner argues that at the time of the alleged invention an ordinarily skilled artisan would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or an equivalent technical degree, and two or more years of experience with system-on-chip, interconnect, or networking technologies. Pet. 8. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. After reviewing the record, we adopt Petitioner’s definition for the level of skill in the art.” slip op. at 7

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

    “II. CLAIM CONSTRUCTION AND THE DISTRICT COURT’S DETERMINATION OF INDEFINITENESS Neither party requests that we construe the optimal moment limitation. Pet. 8–9; Prelim. Resp. 25–28. Further, we see no need to construe this limitation sua sponte. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). For background, however, we address the claim” slip op. at 7

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

    “optimal moment limitation is subjective (and repeating that assertion in its Petition), Petitioner provides no explanation of why Bahadiroglu’s use of that term would have a meaning falling within the scope of the subjective meaning for that term in claim 12. Pet. 28–31 & n.4; Prelim. Reply 3–5. Petitioner has not explained what that subjective meaning of optimal is in the ’800 patent’s claims or why that term as used in Bahadiroglu would satisfy that subjective meaning in the ’800 patent’s claims. Pet. 28–31; Prelim. Reply 3–5. Thus, Petitioner’s showing is insufficient. Second, Petitioner has not explained why the disclosure of an optimal interval teaches or suggests transmission at an optimal time. Pet. 28–31. Spacing transmissions apart by an optimal interval would not inherently result in transmissions being performed at the optimal times. The optimal interval could involve transmissions that are not at the optimal times (when time is viewed by itself), and transmissions at the optimal times may not have the optimal interval separating them. We recognize that it is possible that in some, or many, cases an optimal interval would teach or at least suggest transmissions at optimal times. Petitioner, however, has not explained why it does in this case. Id.” slip op. at 15

  Claim construction§ 103 obviousness
  Patents in suitUS 8,086,800
• Qualcomm Incorporated / Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution denied
  PTAB · Jun 17, 2024 · IPR2024-00355 · APJ Steven M Amundson · IPR · Institution

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

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

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

    “Based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in view of the Samsung litigation and the Qualcomm litigation. See Prelim. Resp. 10–22; supra § II.B. Petitioner argues that we should decline to exercise our discretion under § 314(a) to deny institution. See Pet. 82–84. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra §§ IV.E–IV.I. Hence, we do not consider discretionary denial under § 314(a).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of analysis, we adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’893 patent as well as the asserted prior art. For instance, “a master’s degree” and “three years of work experience” would have allowed someone to understand the ’893 patent as well as the asserted prior art. See Ex. 1003 ¶ 32. Moreover, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Hence, “it is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 19

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

    “for “each data package comprising N data elements” is “significantly broader” than Petitioner’s proposed construction. See Pet. 9–10; Ex. 1026, 25; Ex. 1027 ¶ 164; Ex. 2034, 26. To decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial, we must determine the meaning of “each data package comprising N data elements.” Based on the current record, we agree with Petitioner that “each data package comprising N data elements” means “every data package communicated by the network stations has a fixed size of N data elements.”” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,072,893
• Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Institution denied
  PTAB · May 20, 2024 · IPR2024-00157 · APJ Charles J Boudreau · IPR · Institution

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

  RulingsInstitution decision

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

    “§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, and all supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art as of the filing date of the application for the ’988 patent “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. To the extent necessary for purposes of this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it appears consistent with the prior art before us in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “this limitation. Nonetheless, we find a close question as to whether Petitioner has made a sufficient showing with respect to this limitation, as the only evidence Petitioner cites in support of its argument that “[t]he term GND is often used interchangeably with the term VSS, which refers to negative voltage” (Pet. 8) is an identical, unsupported assertion in Dr. Schubert’s Declaration (Ex. 1003 ¶ 38) to which we accord little or no weight. See 37 C.F.R. § 42.65 (“(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Because we determine below that Petitioner has not made a sufficient showing with regard to limitations 1[E] and 1[H] (see infra” slip op. at 15

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

    “Having considered the parties’ respective arguments and the evidence of record, we agree with Patent Owner that Petitioner has failed to make a sufficient showing with respect to limitations 1[E] and 1[H]. As Patent Owner points out, the Petition effectively concedes that there is a structural difference between pins, as disclosed by Lai, and pads, as recited in claim 1, and Petitioner does not reconcile this difference or explain why a person of ordinary skill in the art would have been motivated to modify Lai’s disclosure and use pads rather than the pins Lai discloses. Prelim. Resp. 31. Even if pins and pads may both be types of terminals, claim 1 specifically recites pads, not terminals, and Petitioner has not persuasively shown that a person of ordinary skill in the art would regard pins and pads as interchangeable or that pads would otherwise be suggested by Lai’s disclosure of pins. Further, as Patent Owner also points out, Petitioner’s inclusion of “general knowledge of a POSITA” in the asserted ground is unavailing knowledge” is to be brought to bear on the combination and has instead “left it to Patent Owner and the Board to speculate on which of the features of the asserted art differs from the claims and how the asserted art or its teaching would have been modified.” Prelim. Resp. 13–14. Although general knowledge of a person of ordinary skill in the art may, under certain circumstances, be relied upon to supply a missing claim limitation (see, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)), such reliance is improper where, as here, it is based merely upon “conclusory statements and unspecific expert testimony” (id. (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016))).” slip op. at 19

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,124,988
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01072 · APJ Brian J Mcnamara · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–47 were unpatentable over the asserted combinations.

  RulingsInstitution decision

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

    “Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.”” slip op. at 2

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

    “argument does not change Petitioner’s recognition that the ’585 patent describes a data repository as including modules, such that an ordinarily skilled person would have understood a “module” to be a portion of a data repository. The ’585 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’585 patent, the term “module” appears in the claims; “module” also appears in the “SUMMARY,” in a manner that parrots the language of the claims. Ex. 1001, 2:1–14. The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Nonetheless, claim 48, which is not challenged in the Petition, does not use the term “module,” instead reciting limitations similar to those of claim 1 with express use of “means”-plus-function language, thereby and equivalents thereof. Ex. 1001, 20:47–22:3; see 35 U.S.C. § 112, para. 6 (2012). Under the doctrine of claim differentiation, we ascribe a broader meaning to the term “module” in claims 1–47.” slip op. at 10

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

    “translator generates eight relational database tables, one for each class (i.e., (1) Component, (2) Analog Component, (3) Memory, (4) Dynamic Memory, (5) Static Memory, (6) Manufacturer, (7) Domestic [manufacturer], and (8) Foreign [manufacturer]), but Althoff’s system does not generate a relational database table called Class because there is no object called Class. Id. at 29–32 (citing Ex. 1006, 4:58–49, 5:8–10, Figs. 1, 8). We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 31–32. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored as table in the object database, there would be no need for Althoff to build a translator to translate objects into table.” Id. at 33. Petitioner relies on Moore’s disclosure of a virtual folders description database to teach the named text module recited in limitation 1[i]. Pet. 5, 28. Petitioner does not identify any disclosure in Moore that teaches the subject matter not disclosed by Althoff. Accordingly, we determine that Petitioner has not sufficiently shown that limitation 1[e] is taught or suggested by the combination of Althoff and Moore.” slip op. at 29

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

    “Petitioner’s Contentions Concerning Reasons to Combine Althoff and Moore Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Moore to improve end-user experience by avoiding the need for complicated SQL queries or for navigating complicated tables to access objects stored in Althoff’s database. Pet. 10. Petitioner contends that SQL queries to access databases are often beyond the capabilities of ordinary users, but such users are already familiar with working with folders. Id. at 11–12. Petitioner contends that, because represent it as a container that is like a folder, a person of ordinary skill would have had reason to combine Moore’s virtual folders with Althoff’s database to simplify use of such systems. Id. at 11–13 (citing Ex. 1003, White Decl. ¶¶ 62–69; Ex. 1007, 3:36–41).” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,219,585
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01071 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 6 (2018). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, Preliminary Reply, Sur-reply, and all supporting evidence, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing for any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’468 patent “would have [had] a Bachelor’s degree in Computer Science and three to five years of industry experience in application development, database development, enterprise application management; or a Ph.D. specializing in the field,” but that “more education could compensate for less experience and vice versa.” Pet. 3 (citing Ex. 1003 ¶ 24). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’468 patent and the cited prior art, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Independent claims 14 and 27 do not use the term “module,”” slip op. at 10

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

    “Petitioner relies on Althoff’s relational database as teaching the recited data repository and, inter alia, the recited element module. See Pet. 14–17. However, Petitioner relies on Althoff’s “class Class 301,” a class used by Althoff’s object-oriented database, as the basis for its arguments with respect to the recited class module. Pet. 21. Although Althoff provides a database translator for translation between object oriented and relational database structures (see, e.g., Ex. 1006, 3:4–6 (stating that “it would be advantageous to provide a method of compilation and translation between object oriented and relational database structures”)), we agree with Patent Owner that there is no object named “Class” or “Class 301” in the user’s object database in Althoff and that no object name “Class” is translated into a “class module” in the relational database. Prelim. Resp. 32. We further agree with Patent Owner that Petitioner points to nothing from either the user’s object database or the meta-model that is translated into a “class module” found in the user’s relational database. Id. As Patent Owner argues, class Class 301 in Althoff is not an object in the user’s object database, but instead is a class (i.e., a data type) defined by the meta-model that can be used by the user’s object database as a data type when the user creates objects. Id. at 29–30, 32, 37– 38. Still further, we agree with Patent Owner that Althoff teaches that relational databases and object databases are distinct and incompatible, a problem that Althoff seeks to address with its disclosed systems and methods. See Prelim. Resp. 25–26, 29 (citing Ex. 1006, 2:9–14, 3:4–24). Patent Owner’s contentions are also persuasive that there is neither any “‘class Class 301’ table” disclosed in Althoff, notwithstanding Petitioner’s assertions, nor any reason to generate such a table. See Prelim. Resp. 36–39 (citing Pet. 21). As Patent Owner notes, by creating separate Althoff preserves class information. Id. at 33. But Althoff does not state that class information for each user-created object is stored in a “row” of a “class Class 301 table” as asserted in the Petition, and we agree with Patent Owner that Althoff would have no need to describe a translation process to convert objects into tables if the classes of the object database were already stored “rows” in a “table.” Id. at 38. With regard to the Petition’s reference to Althoff’s disclosure that “each object of class Class 301 comprises information in table 3-2” (Pet. 21 (quoting Ex. 1006, 11:12–16)), we agree with Patent Owner that Table 3-2 of Althoff does not concern a row of a “class table”; instead, as Patent Owner explains, “Table 3-2 is merely a descriptive device in the specification of Althoff that describes in a two-column format the information stored within an object of type ‘Class’ in the user’s object database . . . in a form more easily accessible to the reader than a narrative.” Prelim. Resp. 38–39 (citing Ex. 1006, 11:15–47).” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,468
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01073 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of success on any challenged claim, including the independent claims’ class-module limitation.

  RulingsInstitution decision

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

    “Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.”” slip op. at 2

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

    “argument does not change Petitioner’s recognition that the ’855 patent describes a data repository as including modules, such that an ordinarily skilled artisan would have understood a “module” to be a portion of a data repository. The ’855 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’855 patent, the term “module” appears in the claims; “module” also appears” slip op. at 10

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

    “We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. The claimed “data repository” is the relational database. See Pet. 13. However, Class 301 is part of the object database and is not translated into the relational database. As Patent Owner argues, Althoff teaches that the system “selects a class 101 in the user’s object database 100,” not the relational database. See Prelim. Resp. 27 [in FIG. 1] comprises a set of classes 101.”)). Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 29–30. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored in a table in the object database, there would be no need for Althoff to build a translator to translate objects into tables.” Id. at 31. For at least the foregoing reasons, we conclude that Petitioner has not shown adequately at this stage of the proceeding that Althoff teaches or suggests limitation 1[c]. Moreover, Petitioner does not allege that Surjanto addresses the above-identified deficiencies of Althoff with respect to that limitation. Thus, we determine that Petitioner has not demonstrated that there is a reasonable likelihood it will succeed in its challenge to claim 1. We need not address the remaining limitations of claim 1 or Patent Owner’s arguments as to why those limitations have not been sufficiently shown. See Prelim. Resp. 34–40.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Petitioner’s Contentions Concerning Reasons to Combine Althoff and Surjanto Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Surjanto to achieve the well-known benefits of Surjanto’s extensions, which were specifically designed to extend OO databases like Althoff’s to provide the known benefits of XML document support, such as “allow[ing] users to reuse and process textual portions of document contents,” “enabl[ing] collaborative development of documents” and in general “offer[ing] comprehensive content management functionality.” Pet. 8–9 (citing Ex. 1008, 9; Ex. 1003 ¶ 61). be motivated to modify Althoff to include Surjanto’s XCoP extensions because of the well-known benefits of XML document support.” Pet. 9 (citing Ex. 1003 ¶¶ 158–164). Petitioner further identifies Surjanto as disclosing that XCoP allows “users to reuse and process textual portions of document contents.” Id. Patent Owner does not respond to Petitioner’s contention as to combining Althoff and Surjanto. We agree that Petitioner has demonstrated sufficient reasons for combining Althoff and Surjanto.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,224,855
• Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution denied
  PTAB · Oct 2, 2023 · IPR2023-00569 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted AEM, IMU-Okabe, or IMU-Okabe-Li 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 an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 27–29). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. at 6 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

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

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 46). Patent Owner indicates that it proposes “construction for certain claim language below,” but it does not actually identify any claim language for construction, let alone provide any constructions. Prelim. Resp. 16–17. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9

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

    “First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a non-linear pathway.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,301,119
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 7, 2023 · IPR2023-00429 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under either asserted obviousness ground.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we 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.” 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

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

    “We do not find Petitioner’s “natural harmony” rationale sufficient reasoning to support why a person of ordinary skill in the art would have modified Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao teach that metadata is sent first and content or raw data is sent second. They do not teach assigning priorities to the files and their associated metadata and then comparing the priorities to determine which is greater. 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 would have been reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Id. at 23. The Petition does not explain why (beyond hindsight) a person of ordinary skill in the art would have modified Sigurdsson to assign and compare priorities by reconfiguring Sigurdsson’s priority algorithm when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. The additional arguments for combining the references presented by Petitioner (Pet. 24–28) do not overcome the failure of the references to disclose this feature of the claims. b) Conclusion For the reasons given, we are not persuaded that Petitioner has demonstrated sufficiently that the “priority-related” limitations including limitations 1c and 1f are taught or suggested by Sigurdsson, Shappell, and Rao. We, therefore, determine that the Petition does not demonstrate a reasonable likelihood of prevailing on this obviousness challenge as to claim 1.” slip op. at 19

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

    “As discussed supra, in Section III.E, the priority-related claim limitations 1c and 1f require assignment of priority to the metadata and file and a comparison of the assigned priorities. Petitioner does not show a teaching in Brown of an assignment of priority to the metadata and file, or of a comparison of the assigned priorities, or use of a “priority assignment configuration” for assigning the priorities. Pet. 53. At most, Brown, as modified by Hesselink,4 discloses that metadata may be sent before sending files or portions of files. See id. None of the other references teaches that there is an assignment of priority to metadata or a comparison of the priorities of the metadata and files. As discussed, Brown as modified by Hesselink, at most, teaches that metadata may be transmitted before files or portions, and Shappell and Rao 4 Petitioner relies on Hesselink for disclosing the first client automatically transferring a copy of a file specifically “responsive to the user modifying a content” of the file, as recited in limitation 1b. Pet. 47 (emphasis omitted). teach that metadata is always sent before files. See discussion supra in Section III.E.1. As is discussed supra, even if the metadata is sent, or even “categorically” sent, before files are sent, that does not teach assignment of priorities or a comparison of metadata and file priorities as required by the claim limitations. Id. Nor has Petitioner sufficiently demonstrated that Shappell or Rao suggest assigning different priorities to metadata and files and comparing those priorities. As previously observed with respect to Sigurdsson, the Petition does not persuasively explain why a person of ordinary skill in the art would have modified Brown to assign and compare priorities when it would have been simpler always to send the metadata first and content second, as taught in Shappell and Rao. Accordingly, for the reasons given, we are not persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1.” slip op. at 22

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,289,607

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.