• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution denied
  PTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution

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

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

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

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

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

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

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

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

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

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

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

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

  RulingsInstitution decision

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

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

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

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

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

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

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,754,823
• Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.

  RulingsInstitution decision

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

    “inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for 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

    “B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for this Decision. 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

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

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

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,642,787
• Box, Inc. And Dropbox, Inc. v. Topia Technology, Inc.Institution denied
  PTAB · Aug 8, 2023 · IPR2023-00430 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of establishing the claims’ unpatentability.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). Having considered the arguments and the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

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

    “Petitioner believes that we presently need not construe any claim language expressly. Pet. 8. Patent Owner does not argue that we need to construe any claim language expressly. See generally Prelim. Resp; Prelim. Sur-Reply. Further, we do not see the need to expressly construe any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends: “[T]he claims’ earliest effective filing date is November 10, 2008. A POSA would have possessed a bachelor’s degree in computer science (or similar degree), and two years of work experience developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies. (Balakrishnan, ¶¶15-21.)” Pet. 7–8. Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp; Prelim. Sur-Reply. We find Petitioner’s position consistent with the ’622 patent and the asserted prior art, and supported by Dr. Balakrishnan’s testimony (Ex. 1028 ¶¶15–21). Therefore, we adopt Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 8

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

    “We do not find Petitioner’s “natural harmony” rationale sufficient reasoning to establish why a person of skill in the art would have modified Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings to meet the claims. 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. 27–28. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Id. at 25–26. 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. 28–32) do not overcome the failure of the references to disclose this feature of the claims.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 11,003,622
• 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
• Netskope, Inc. v. Fortinet, Inc.Institution denied
  PTAB · May 15, 2023 · IPR2023-00175 · APJ James P Calve · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “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.” Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims of the ’601 patent. We therefore do not institute an inter partes review.” slip op. at 2

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

    “In contrast to a fence-and-gate perimeter, a virtual perimeter globally distributes P/PoPs as perimeter points of presence for distributed computer platforms in different locations. Ex. 1001, 4:19–33, 5:33–53, Fig. 1. P/PoPs can be distributed geographically across buildings, cities, regions, countries, and continents to connect virtually or physically with computer platforms, computing nodes, and access end-points of different entities in different areas to provide a customized virtual perimeter. Id. at 5:43–9:48, Fig. 1.” slip op. at 9

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

    “[I]n appropriate circumstances, a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). Yet, comparing Hudis’ perimeter of actual POPs 3051–N that are positioned at access points of computing nodes 125, 132, 135, 221 232, 235 to a fence-and-gate perimeter in the’601 patent is insufficient to explain adequately why a person of ordinary skill in the art would have modified Hudis to achieve a virtual perimeter (Pet. 21–22; Ex. 1002 ¶¶ 70–72), particularly when the ’601 patent distinguishes a prior art fence-and-gate perimeter as different from, and inferior to, such a virtual perimeter (see Ex. 1001, 1:17–4:39; 5:33–10:62, Figs. 1–3B). Nor has Petitioner shown sufficiently that Hudis provides motivation such that a skilled artisan “would have found it obvious that Hudis’ POPs provided a virtual perimeter.” Pet. 22. Instead, Hudis touts the benefits of co-locating actual POPs at access points for nodes “to provide a degree of optimization of network operations, to minimize latency . . . while also providing for appropriate localization of the user experience.” Ex. 1004, 6:48–55. Hudis must use two or more POPs 305 to cover an area that is too large for a single POP to provide satisfactory network performance or localization. Id. at 6:64–67. Hudis warns that locating a POP away from an access point increases network latency and reduces the localization of users’ experiences. Id. at 7:1–5. Hudis even defines the required “co-location” as “a given POP is close enough to the user to provide a degree of optimization of network operations [and] minimize latency.” Id. at 6:51–53. slip op. at 19

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

    “The parties appear to agree that Hudis forms a perimeter with POPs located physically at user nodes and access points 3121–N where computing nodes and users connect to global SCM service 105 via Internet 109 and where an entity’s control over its networking infrastructure ceases to exist. See Pet. 21–22; Prelim. Resp. 18–22; Ex. 1004, 6:41–7:26, Fig. 3. Locating actual POPs at nodes and access points to SCM service 105 does not form a “virtual perimeter” as we construe that limitation. Indeed, Petitioner’s comparison of Hudis to a fence-and-gate perimeter described in the ’601 patent’s discussion of known perimeters indicates that Hudis does not disclose a “virtual perimeter.” Such contentions do not address the term “virtual.” See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that reading limitations out of a claim is “contrary to the principle that claim language should not be treated as meaningless”). Petitioner’s assertion that Hudis’ fence-and-gate perimeter of actual POPs co-located at ingress/egress points of a network is a virtual perimeter contradicts the ’601 patent’s description of a “virtual perimeter” as using P/PoPs to provide “virtual instances” of access points and perimeters around computing nodes even though the P/PoPs are located away from nodes 121– 124, 131–134 of different entities. Pet. 21–22; Ex. 1001, 5:33–9:48, Fig. 1. Petitioner’s assertion that Hudis’ SCM service is similar to a prior art fence-and-gate perimeter described in the ’601 patent shows that Hudis does not disclose a virtual perimeter, because the ’601 patent distinguishes a prior art fence-and-gate perimeter from a virtual perimeter. Pet. 15, 21; Ex. 1001, 1:17–4:39.” slip op. at 17

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,197,601
• Microsoft Corporation / Samsung Electronics Co., Ltd. v. Intent Iq, LLCInstitution denied
  PTAB · Apr 7, 2023 · IPR2022-01420 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 36, or 37 were unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). 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). For the reasons provided below, 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 petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art Petitioner asserts: [a] person of ordinary skill in the art (“POSITA”) as of the claimed priority date for the ’398 patent would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent, and two or more years of experience with designing, programming, configuration, or analysis or research with Internet or similar network-related processes including, for example, user or entity profile management or web-based targeted content delivery, or a related field. A person also could have qualified with more formal education and less technical experience, or vice versa. Pet. 17–18 (citing Ex. 1002 ¶ 11). “Patent Owner does not challenge this definition.” Prelim. Resp. 4. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’398 Patent Specification and the asserted prior art.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15

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

    “We agree with Patent Owner’s arguments. Petitioner does not direct us to evidence sufficient to demonstrate that Madhavan discloses all of the elements of the claimed invention as arranged in the claim, specifically, that “automatically generating and storing electronic indicia of an association between the first device identifier and an electronic identifier of a second device” is “based on automatically recognizing that each of the first and second devices was connected, independently of the other, to a common local area network.” Petitioner’s assertion that a person of ordinary skill in the art “would have understood Madhavan to teach that the stored electronic indicia of an association between user devices (i.e., the IP address of the network interface module 146) is based on automatically recognizing that each device was independently connected to a common LAN” is supported only by Dr. Turnbull’s identical testimony. Pet. 32; Ex. 1002 ¶ 82. Dr. Turnbull’s testimony, however, is not supported by a sufficient underlying factual basis, and, therefore, is entitled to little weight. See 37 C.F.R. § 42.65(a); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (Vidal, Director) (Precedential). The disclosures of Madhavan (Ex. 1007, 5:11–17, 7:22–26, Fig. 2) cited by Petitioner (Pet. 31–32) and Dr. Turnbull (see Ex. 1002 ¶¶ 81–82) are silent regarding any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN, and therefore, fail to disclose any generation and storage of the IP address of the network interface module 146 being based on any automatic recognition that each of network television 142 and DVR 144 was connected, independently of the other, to a common LAN. See Ex. 1007, 7:22–26, Fig. 2 (cited by Pet. 31–32). Instead, Madhavan merely discloses that network 120 may be a LAN and “both the television set 142 and the [DVR] 144 may be coupled to the network 120 via a network interface module 146, which may also be identified through a respective IP address.” Ex. 1007, 7:22–26; see also id. at 5:11–16 (similar disclosure). Moreover, Petitioner’s parenthetical quotation of the ’398 Patent disclosure that “[t]he existence of the common IP address associates the online access IP address and the set-top box IP address” is insufficient to support Dr. Turnbull’s testimony because it is not prior art. Pet. 32 (quoting Ex. 1001, 13:47–495))” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,677,398
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Apr 6, 2023 · IPR2022-01455 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 11, 13–16, 19, and 20 because Petitioner did not explain why a skilled artisan would combine Merriman’s alternative embodiments.

  RulingsInstitution decision

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

    “Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 17

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

    “We agree with Patent Owner that the Petition relies on two alternative embodiments for its invalidity theory without sufficient explanation of how or why a person of ordinary skill in the art would have combined these embodiments. See Prelim. Resp. 7–12. Merriman discloses a real time embodiment, wherein “the advertiser’s website reports activity in real [wherein] the advertiser’s web site keeps a user log file of visitor activity and reports the user log file back to the advertisement server.” Id. at 3:38– 41. In this latter embodiment, “[r]eporting of user log files may be by email or any other file transfer technique.” Id. at 3:41–42. Merriman further discloses that the real time embodiment uses “spotlight tags placed on specific pages in the advertiser’s web site” to provide feedback of individual user’s activities in real time back to the advertising server 14, whereas the other embodiment provides “data accumulated in a user activity list” via email or a file transfer operation. Ex. 1003, 4:45–48, 4:51–54, Fig. 2. Throughout its specification, Merriman describes these embodiments as mutually exclusive alternatives. See, e.g. Ex. 1003, code (57), 3:35–43, 4:44–5:3, 5:33–54. The Petition, however, “overlooks or ignores Merriman’s clear distinctions and relies on aspects of both alternative embodiments.” Prelim. Resp. 11. Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “F. Discretionary Denial Under 35 U.S.C. § 325(d) As we have determined that Petitioner does not demonstrate a reasonable likelihood of prevailing for any claim on any ground, we need not consider whether application of the Director’s discretionary authority to deny institution in accordance with 35 U.S.C. § 325(d) is appropriate in this proceeding.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7– 8. (citing Ex. 1002 ¶¶ 30–34). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical 1 Merriman et al., U.S. Patent No. 8,566,154 B2, issued Oct. 22, 2013 (Ex. 1004) (“Merriman”). 2 Rosenberg et al., U.S. Patent No. 6,073,241, issued June 6, 2000 (Ex. 1005) (“Rosenberg”). definition of the level of skill at this time. Prelim. Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,244,582
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Mar 21, 2023 · IPR2022-01454 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–9, 11–14, 16, 17, 19, or 20 obvious over the asserted prior art.

  RulingsInstitution decision

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

    “6. Conclusion Claims 1 and 11 In sum, after considering the arguments presented in the Petition and Patent Owner’s Preliminary Response, we determine that, for the reasons given, Petitioner has failed to demonstrate sufficiently that Mayadas and Katiyar teach or suggest independent claims 1 or 11. Therefore, Petitioner has not demonstrated a reasonable likelihood of prevailing on this challenge to claim1 or 11, or to their dependent claims 4–9, 13, 14, 16, 17, 19, and 20. 7. Dependent Claims 2 and 3 Petitioner’s challenge to these dependent claims relies on Mayadas in combination with Katiyar and Rosenberg. Pet. 61–63. These claims depend from claim 1, and therefore they incorporate disputed claim element 1.c discussed supra, in Section III.E.5. Petitioner’s analysis of these claims therefore relies on Mayadas for the terms disputed by Patent Owner. Rosenberg is cited for the limited teaching of “automatically placing a tag (cookie) without any expression of the visitor’s consent to divulge information.” Pet. 62. For the reasons given in Section III.E.5, therefore, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge to claims 2 and 3.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denialNot reached

    “IV. DISCRETIONARY DENIAL Patent Owner contends that the Board should exercise its discretion to deny the Petition under 35 U.S.C. § 314(a). Pet. 21–35. Because we have determined that the Petition does not succeed on the merits, we do not need to address the issue of discretionary denial.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 8 (citing Menascé Decl. ¶¶ 30–34). Petitioner adds that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not provide a description of the person of ordinary skill. For this decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as consistent with the prior art before us in this proceeding. C. Claim Construction” slip op. at 7

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner states that “[f]or the purposes of this Petition, the challenged claims are interpreted according to their plain and ordinary meaning.” Pet. 9. Patent Owner contends that Petitioner has argued for construction of multiple terms of the ’586 patent in parallel district court litigation, and that Petitioner “does not explain how [Petitioner’s] theories in this IPR are consistent with its district court arguments for how these terms should be construed.” Prelim. Resp. 10. But Patent Owner asserts that “[t]his Preliminary Response does not depend on any express claim constructions, and institution should be denied regardless of claim construction issues.” However, “Patent Owner reserves its right to identify terms requiring construction in the event this IPR is instituted.” Id. We determine that no claim terms are in controversy. Therefore, no other claim term needs to be construed at this stage. See Vivid Techs., Inc., 200 F.3d at 803.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,244,586

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.