- Unified Patents Inc. v. Hybrid Audio, LLCRehearing deniedPTAB · Apr 7, 2017 · IPR2016-01265 · APJ Monica S Ullagaddi · IPR · Rehearing
The Board denied rehearing of its decision denying institution, finding no overlooked or misapprehended arguments and upholding its construction of “filter” to exclude QMF filters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“(d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“evidence when we determined that the term “filter,” in the context of the ’281 patent and its prosecution history, excludes QMF filters. See id.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Reh’g Req.”) of our Decision Denying Institution (Paper 7, “Dec.”). Petitioner requests that we reconsider our decision to deny institution of inter partes review with respect to claims 5, 12, 18, 26, 34, 41, 48, 57, 66, 71, 83, 90, 95, 100, 107, 112, 114, 116, and 120 (“the challenged claims”) and our determination that Petitioner had not demonstrated a reasonable likelihood of prevailing in showing that the challenged claims of U.S. Patent No. RE40,281 (Ex. 1001, “the ’281 patent”) would have been obvious over various combinations of Jones, Adelson, and Veldhuis. For the reasons set forth below, the request is denied. slip op. at 2
Claim construction§ 103 obviousness - Unified Patents Inc. v. Cuica, LLCInstitution deniedPTAB · Feb 27, 2017 · IPR2016-01644 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on claims 1–4, 6, 7, 9, and 10 because the cited combinations did not show the claimed means-plus-function limitations.
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 “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 conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Unified would prevail in challenging claims 1–4, 6, 7, 9, and 10 of the ’983 patent as unpatentable under 35 U.S.C § 103(a). Pursuant to 35 U.S.C. § 314, we hereby decline to institute an inter partes review of the ’983 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We agree with Unified’s view that the term “forresta” does not have ordinary meaning because the Specification indicates that the inventor intended to act as a lexicographer for the term based upon the use of quotation marks for identification of the term therein, and referring to “forresta” as “a set of values herein named” and “herein labeled.” Ex. 1001, Abstract, 3:31–33. The Specification states that the invention “overcomes the deficiencies of prior schemes for controlling content dissemination,” by using a “forresta” as “passive information” that is included “within the user’s request,” and that by “[u]sing the functionality provided by the forresta, each of the client requests and each of the server responses are individualized.” Id. at 3:28–34. On this record, we agree that the Specification supports Unified’s proposed construction of the term “forresta” as “any passive data which can be used to identify the user’s level of access to a repository of data,” and we adopt this construction for purposes of this Decision.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means-plus-function terms Independent claims 1 and 9 include several recitations of “means” or “means for” limitations. See Ex. 1001, 20:39–63, 22:43–23:35. Unified advocates that 35 U.S.C. § 112 ¶ 6 applies to the “means for allowing access” term of claim 1 and “means for organizing data” of claim 9 because the claim language does not provide sufficient structure to perform the claimed function.3 Pet. 16–18. We agree with Unified on this issue because the use of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 applies, and there is no structure identified in the claims. Personalized Media Comm’s, LLC v. ITC, 161 F.3d 696, 703–04 (Fed. Cir. 1998). Unified identifies the “server computer 102 [that] contains . . . data access control (‘DAC’) process 106 of the present invention” as the structure for the “means for allowing access” term of claim 1, and the “reference tool 500,” depicted in Figure 5, as the structure of the “means for organizing data” of claim 9. Pet. 16–18 (citing Ex. 1001, 4:60–67, 7:57–8:5, Figs. 1, 2, 5; Ex. 1002 ¶¶ 25, 27).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1006, 7:27–41; see Pet. 32.5 Unified appears to rely upon Shannon’s client computer number or machine addresses such as Internet Protocol (“IP”), Media Access Control (“MAC”) addresses, and/or usernames as teaching the claimed n-byte character sequence. Pet. 32. The claim limitation, however, requires the creation of a forresta identity as an n-byte character sequence, and Shannon merely discloses that there are different identifiers of a computer or of a user of a computer that may be associated with different groups and have different assigned levels of access. See Ex. 1006, 7:11–26. Even assuming the identifiers in Shannon are “an n-byte character sequence,” as recited by the claim, Shannon still fails to teach any “creating” because the computer numbers taught by Shannon—e.g., IP 5 In the Petition, Unified cites to Exhibit 1006 at 7:11–26 (Pet. 32), but the text quoted by Unified, and reproduced above, is at 7:27–41. The erroneous citation appears to be inadvertent error, and we rely on the textual portion of Shannon quoted in the Petition. address or MAC address—already exist and, therefore, are not “creat[ed]” by Shannon’s group/source database 203. Moreover, even assuming that Shannon teaches “creating” computer numbers, we still would not be persuaded that Shannon teaches the recited “means for creating said forresta identity” because Unified does not identify, and we cannot find, any teaching in Shannon of the use of the algorithm disclosed in the ’983 patent “for creating a forresta identity,” i.e., fcode process 900. Unified also does not argue that Shannon’s process is equivalent to fcode process 900, or that He teaches this limitation. We are, therefore, not persuaded that the asserted combination of Shannon and He teaches or suggests the limitation of “means for creating said forresta identity as an n-byte character sequence” of the “access control means” of claim 1. Because claims 2–4, 6, and 7 depend from independent claim 1, and because Unified cites no additional evidence in discussing these claims that would remedy the deficiency of the prior art discussed above with respect to claim 1, the obviousness challenge to dependent claims 2–4, 6, and 7 also is not persuasive.” slip op. at 21
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,466,983 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Apr 12, 2016 · IPR2016-00018 · APJ Peter P Chen · IPR · Institution
The Board denied institution because Arista did not show a reasonable likelihood that claims 1, 2, 6–9, 12, 13, and 17–20 were unpatentable over Chau or Chau and Wils.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review of claims 1, 2, 6–9, 12, 13, and 17–20 of U.S. Patent No. 8,051,211 B2 (Ex. 1001, “the ’211 patent”). Paper 2 (“Pet.”). Patent Owner, Cisco Systems, Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of claims 1, 2, 6–9, 12, 13, and 17–20 of the ’211 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- BurdenNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In addition, as we determined in the ’975 IPR, for purposes of this decision, we determine that the broadest reasonable construction of “subsequent to” is its ordinary and customary meaning, namely, “after.” See Case IPR2015-00975, slip op. at 7–8 (PTAB Oct. 6, 2015) (declining to adopt Patent Owner’s proposed construction of “as a result of” for “subsequent to”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s only apparent contention for Chau’s disclosure that the first and second LANs are both usable for simultaneous transmission “subsequent to” the aggregation of LANs, is that “the simultaneous transmission occurs as a result of the grouping of the first LAN (channel C2) and second LAN (channel C1).” Pet. 19–20, citing Ex. 1014 ¶ 54. The Lin declaration is similarly worded, and like the Petition, is silent as to whether Chau’s alleged simultaneous transmission occurs “subsequent to,” i.e., after the aggregation of LANs. Petitioner’s argument of simultaneous transmission occurring “as a result of” alleged aggregation of LANs is unavailing, because “subsequent to” means, “after,” not “as a result of.” In fact, in the related ’975 IPR, we expressly rejected the Patent Owner’s proposed construction of “as a result of” for “subsequent to.” See Section II.A. Neither the Petition nor the Lin declaration (Ex. 1014) cite any evidence of simultaneous transmission occurring “after” aggregation of LANs in Chau. Accordingly, we are not persuaded that Petitioner’s showing demonstrates a reasonable likelihood that it would prevail as to claim 1 being anticipated by Chau.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,051,211 - Arista Networks, Inc. v. Cisco Systems, Inc.Rehearing deniedPTAB · Feb 29, 2016 · IPR2015-00973 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing and again denied institution on all challenged claims because the petition did not show a reasonable likelihood that Hendel disclosed the claimed access result.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing that the decision should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“being forwarded (restriction) or that an output port is selected and altered. Rather, these citations generally state that priority can be given to certain packets and quality of service can be applied to layer 2 routing. Thus, we are not persuaded that Petitioner’s citation to quality of service in general discloses “generating an access result in response to said at least one selected match.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“rehearing, we determine that the phrase “modifications on the intended destination address to which a packet is to be transmitted” introduces uncertainly into the construction.4 The construction in the Decision appears to conflate the “destination” of a packet with the output interface to which a packet is directed. The Specification does not describe, however, modifying the “destination” of the packet; the only “modification” on how the packet is routed specifically described in the Specification is when “the access control element 120 . . . [alters] the output interface, which was selected by the routing element 110, to another selected output interface.” Ex. 1001, 6:13– 4 Petitioner does not seek rehearing of the claim construction (Reh’g Req. 4, n. 1) but our analysis requires that we revisit the claim construction determination from the Decision. 16; Reh’g Req. 4–5. Thus, we modify our construction of “access control” to mean only restrictions on the transmission of a packet or alteration of a selected output interface for the packet.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Additionally, Petitioner cites to its Declarant Dr. Chao. Reh’g Req. 6 (citing Ex. 1003 ¶ 31). Petitioner’s Declarant states without citation that “a switch may modify the forwarding decision to account for network policies such as quality of service determinations. That is, a packet may be destined for a certain MAC address and port on the switch, but the switch may determine that the packet can be transmitted more reliably through another port, and so it will change the destination port for that packet.” Ex. 1003 ¶ 31. Petitioner’s Declarant’s testimony is conclusory and unsupported by evidence, and, therefore, we give that testimony no weight.” slip op. at 7
Claim constructionPatents in suitUS 6,377,577 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01494 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1–4, 8– 12, 14, 15, 19, and 20 (“the challenged claims”) of U.S. Patent No. 8,054,315 B2 (Ex. 1001, “the ’315 patent”). Paper 2 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’315 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Apart from the claims, the ’315 patent does not use the term “image decoder circuit.” The ’315 patent’s definition of “decoder” to mean “a video and/or audio decompression device,” and its disclosure that the “decoder/encoder” can be any conventional decoder complying with any conventional standard support a construction of “decoder” that encompasses both hardware and software, but those portions of the Specification do not use the word “circuit,” as the claim term recites. Elsewhere, the Specification uses “circuit” to describe hardware. See, e.g., Ex. 1001, 2:26 (referring to video decoding circuit 12), 3:2 (referring to interface circuit 146), 6:45–51 (referring to decoder/encoder 80 as either a device or a cell in an integrated circuit), 6:52 (referring to video decoding circuit 12), 14:60–62 (“Thus, decoding in a computer can be performed according to the invention by means of a low-cost (due to the small number of pins) single integrated circuit . . . .”). Based on our review, the ’315 patent does not use the word “circuit” to refer to software executing on hardware. The dependent claims, however, suggest that the “circuits” recited in claim 1 are not limited to physical hardware. Dependent claim 4, for example, recites “wherein the audio circuit includes a software audio decoding component” (id. at 16:17– 18 (emphasis added)), which suggests that the “audio circuit” recited in claim 1 is broad enough to encompass software. See also id. at 6:57–62 (“The audio decoding can be performed by a separate audio coder-decoder (codec) coupled to the first device 42, or through software. In the preferred embodiment of the invention, when the decoder/encoder 80 is in a system containing a processor and is coupled to the processor, the audio decoding is performed in software.” (emphasis added)). Similarly, dependent claim 8 recites “wherein the first, second, and third onboard memories are configured in the same onboard storage space,” which suggests that the “first onboard memory,” “second onboard memory,” and “third onboard memory” recited as components of the “image decoder circuit” in claim 1 are logical memories rather than distinct, physical memories. Accordingly, on this record, and for purposes of this Decision, we adopt Petitioner’s proposed construction of “image decoder circuit.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On this record, Petitioner does not explain adequately how Gulick would have been modified. It is not clear from the Petition, for example, whether Petitioner is arguing that a person of ordinary skill in the art would have modified Gulick to perform the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine 112, or by adding known decoder hardware to the one or more DSPs of Gulick’s multimedia engine 112. Dr. Stone’s testimony is equally insufficient. In paragraph 99, for example, Dr. Stone testifies that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing.” Ex. 1030 ¶ 99 (citing Ex. 1007; Ex. 1023). Although Exhibit 1007 refers to its “MPEG accelerator circuit” as “a dedicated digital signal processor for video decompression” (6:56–57), it describes the video decompression engine as “hardwired (circuitry)” (7:2). Exhibit 1023, in contrast, suggests the use of software. Ex. 1023, 6:20–24 (“DSP engine 206 which is programmable to perform various functions such as MPEG decoding” (emphasis added)). To the extent Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine, we are not persuaded that such a modification would have been obvious. Gulick does not teach that multimedia engine 112 decompresses or decodes video. Although Gulick describes the multimedia engine as performing “video and audio processing functions” (see, e.g., Ex. 1017, 5:18), the examples described—“polygon rendering and texture mapping” (id. at 5:26)—relate to graphics processing rather than to video decoding or decompression. In addition, Gulick describes multimedia engine 112 as including “video processing circuitry and/or firmware” that converts video data into analog signals for output directly to video monitor 114 or for outputting digital video pixel data (id. at 5:37–61), which further suggests that the “video” functions performed by multimedia engine 112 relate to processing graphics data for output rather than to decoding or decompressing video. Neither Petitioner nor its expert explains in sufficient detail why or how a person of ordinary skill in the art would have programmed a DSP intended for graphics processing to perform the functions required for video decoding or decompression. To the extent that Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by adding known decoder hardware to Gulick’s multimedia engine 112, we are not persuaded that doing so would have constituted a combination of familiar elements according to known methods to yield predictable results. Petitioner also does not explain how known decoder hardware would be added to the digital signal processor of Gulick, or why a person of ordinary skill in the art would have been motivated to do so. Although Exhibit 1007 refers to its MPEG accelerator chip as a “dedicated digital signal processor,” we are not persuaded on that basis alone that the addition of dedicated video decoding hardware to any digital signal processor would have constituted a combination of familiar elements according to known methods to yield predictable results.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared memory.” Petitioner identifies Gulick’s multimedia memory 160 and argues that it is “shared” because Gulick teaches that “arbiter block 161 performs arbitration between the CPU 102 and the multimedia engine 112 for the multimedia memory.” Pet. 22– 23 (quoting Ex. 1017, 4:41–43). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared.” The ’315 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’315 patent. Gulick describes CPU 102 as using primarily main memory 110: Referring again to FIG. 1, in the preferred embodiment, the main memory 110 stores the operating system and applications software as well as driver software, including video drivers and audio drivers. The CPU 102 executes applications software and driver software from the main memory 110 and writes any associated video and audio data to the main memory 110. The CPU 102 then provides high level instructions directly to the multimedia memory 160 and/or to the DMA engine 164, or to the multimedia engine 112. Ex. 1017, 6:13–22. Gulick describes CPU 102 using multimedia memory 160 only in exceptional circumstances, such as when main memory 110 is full: Thus the multimedia memory 160 is available to store non-multimedia data as needed. In other words, if the main memory 110 becomes full and additional memory is needed, the CPU 102 can store code and data in the multimedia memory 160. Thus, the multimedia memory 160 is used for real-time or multimedia data and is also used by the CPU 102 as overflow memory space. Id. at 4:34–40; see also id. at 8:2–3 (“Thus the multimedia memory 160 is available to store non-multimedia data as needed.”). Because multimedia memory 160 exists in addition to main memory 110 and because CPU 102 uses main memory 160 only in exceptional circumstances, we are not persuaded that multimedia memory 160 is the “shared memory” of claim 1. Moreover, to the extent Petitioner is arguing that Gulick’s main” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,054,315 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01503 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 6–12, or 17 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1, 6– 12, and 17 (“the challenged claims”) of U.S. Patent No. 8,681,164 B2 (Ex. 1001, “the ’164 patent”). Paper 1 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’164 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes to construe the term to mean “hardware and/or software that translates data streams into video or audio information and vice versa.”2 Pet. 9–10 (citing Ex. 1001, 2:1–6 (“Video and/or audio compression devices (hereinafter ‘encoders’)” and “a video and/or audio decompression device (hereinafter ‘decoder’)”), 6:62–7:5, 15:38–41 (“[a]ny conventional decoder including a decoder complying to the MPEG-1, MPEG-2, H.261, or H.261 standards, or any combination of them, or any other conventional standard can be used as the decoder/encoder.”), 16:63–64, and 17:9–13). Petitioner further relies upon a dictionary definition for “decoder” as evidence of the term’s ordinary and customary meaning to a person of ordinary skill in the art as of the effective filing date of the ’164 patent, in the context of the entire patent including the Specification. Id. at 10 (citing Ex. 1014, 56 (“decoder (n). Any hardware or software system that translates data streams” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers no other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, no other claim terms require express construction.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared main memory.” Petitioner identifies Gulick’s main memory 110 and multimedia memory 160 and argues that multimedia memory 160 is “shared” because Gulick teaches that DMA engine 164 “performs transfers between the main memory 110 and the multimedia memory 160.” Pet. 14–15 (quoting Ex. 1017, 4:44–46). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared” main memory. The ’164 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’164 patent. Gulick describes CPU 102 as using primarily main memory 110:” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,681,164 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 22, 2015 · IPR2015-01050 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the means-plus-function claims lacked sufficient structural disclosure and Feldmeier did not establish claim 63’s forwarding-permission limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’853 patent.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” (Ex. 1001, 5:21–25), or some other processor running IOS (Ex. 1001, 1:33–37). It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” (id. at 3:36–39). Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): “means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel”; “means for making a routing decision in response to said access result”; and “means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet.” Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues, “Feldmeier’s packet forwarding is not the same as determining forwarding permissions (e.g., whether a packet is restricted from being transmitted from a selected source device to a selected destination device.)” Prelim. Resp. 31–32. Patent Owner further argues Feldmeier does not process a packet based on a forwarding permission. Id. We agree. Petitioner purports to show that “matching one or more characteristics of said packet with one or more access control specifiers,” recited in claim 63, results in “permission” to forward a packet. Petitioner states that “the information obtained from the CAM lookup governs the decision of whether to route or discard the packet.” Pet. 40 citing (Ex. 1003 ¶ 106). We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner (Pet. 40), “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Ex. 1005, 13:24– 27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translations according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input or output permission by, among other things, “determining all of the successful matches”). Based on the above passages, Petitioner has not shown evidence that an affirmative match in Feldmeier results in a permission of packet forwarding, as required by claim 63. For the reasons stated above, we determine Petitioner has not shown sufficiently that Feldmeier discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Feldmeier.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,023,853 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 22, 2015 · IPR2015-01049 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1, 2, 5, 7– 10, 12–16, 18–22, 25, and 28–31 of the ’577 patent and, therefore, deny the Petition for inter partes review..” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner, “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Id. at 13:24–27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translation[s] according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices. Ex. 1001, 1:4–10. Patent Owner also cites certain dictionary definitions. Id. at 10–11. Patent Owner states that “modifying” transmission is “nowhere in the record.” Id. Nonetheless, Patent Owner does not explain why the embodiment cited by the Petitioner above is not relevant to construing the claims. Because the embodiment cited by Petitioner suggests that access control may be used to change the destination address of a packet, we apply a broader definition than proposed by Patent Owner. We find the broadest reasonable construction of “access control” to include restrictions or modifications on the intended destination address to which a packet is to be transmitted.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other
“The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,023,853
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.