• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Mar 10, 2025 · IPR2024-01343 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the three asserted obviousness grounds.

  RulingsInstitution decision

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

    “II. ANALYSIS A. Principles of Law Petitioner bears the burden of persuasion to prove unpatentability of the claims challenged in the Petition, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if present, any objective evidence of obviousness or non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8

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

    “dedicated to claim construction, but Patent Owner does address claim construction in its discussion of Petitioner’s challenges. See, e.g., Prelim. Resp. 21–23 (Patent Owner arguing: “Petitioner’s ‘Feed Selection Mapping 2’ should be rejected because it relies on rewriting the claim so that it encompasses a device other than the aggregator providing user information to the publisher. . . . Because Whitehead’s alleged aggregator does not provide profiles to the alleged publisher in a channel request responsive to that request, ‘Feed Selection Mapping 2’ does not even meet the plain reading of the aggregator providing to the publisher ‘the media feed selection’ with ‘user information’ included.” (emphasis added)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Obviousness of Claims 1 and 2 over Whitehead (Ground 1)” slip op. at 9

  • BurdenDecided for patent owner

    “We find the Petition to be too confusing to follow. It is Petitioner’s burden to articulate a coherent and discernable case that is readily understandable by the Board and that places Patent Owner on notice of the basis of Petitioner’s case so that Patent Owner may have the opportunity to respond. See 37 C.F.R. § 42.104(b) (“[T]he petition must set forth . . . a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art.” (emphasis added)). In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its Whitehead obviousness challenge.” slip op. at 16

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,923,947
• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Mar 10, 2025 · IPR2024-01341 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–10 unpatentable under any of the three asserted obviousness grounds.

  RulingsInstitution decision

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

    “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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’261 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. Cf. Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “[m]y opinions in this declaration would not change were I to adopt the definition of a POSITA offered by [Petitioner’s declarant] Dr. Almeroth.”).” slip op. at 8

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

    “read limitations out of the claims.” (citation omitted)). Because our decision does not turn on this proposed construction, we need not address it. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 10

  • BurdenDecided for patent owner

    “Thus, according to Whitehead, the purported client device (media player 115) is a TV or monitor that displays menus, whereas the selection of programming is performed by the remote control 111 in conjunction with the set top box (content processing device 110). Petitioner does not explain adequately how the TV/monitor itself has the capability of selecting a program or, in terms of the claim, how the aggregator (set top box) receives a media feed selection from the TV/monitor. Petitioner’s lengthy string cite, see Pet. 21, is not an adequate substitute for an explanation in the Petition, and we decline to study all the cited portions to try to discern whether Petitioner might have a viable explanation as to how the TV/monitor selects programming.” slip op. at 12

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,215,261
• Tiktok Inc. v. Ntech Properties, Inc.Institution denied
  PTAB · Feb 25, 2025 · IPR2024-01338 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all grounds because the petition did not show a reasonable likelihood of prevailing on any challenged claim, including deficiencies in the Marcus156- and Ferman-based obviousness showings.

  RulingsInstitution decision

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

    “III. CONCLUSION We have weighed the evidence presented by Petitioner and considered its arguments. We determine that Petitioner fails to establish a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition. For each challenged claim in each asserted ground of unpatentability, Petitioner fails to establish that the asserted art teaches or suggests multiple recited limitations. Accordingly, we determine that trial should not be instituted on claims 1–20 of the ’185 patent. IV. ORDER Upon consideration of the record before us, it is: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 37

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we deny institution of inter partes review of the ’185 patent. 3 1 Petitioner identifies TikTok Inc., Bytedance Ltd., Bytedance Pte. Ltd., and TikTok Pte. Ltd. as real parties-in-interest. Pet. 2. 2 Patent Owner identifies itself, NTECH Properties, Inc., as the real party-ininterest. Paper 4 (Patent Owner’s Mandatory Notices), 1. 3 In addition to the Petition and Preliminary Response, Petitioner’s Preliminary Reply (Paper 7) and Patent Owner’s Preliminary Sur-reply (Paper 8) were filed. However, these papers were limited to arguments related to discretionary denial under 35 U.S.C. § 325(d). We do not reach the issue of discretionary denial in light of our decision to deny institution on the merits.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the ’185 patent (“POSITA”) had at least a Bachelor of Science in electrical engineering, computer engineering, or similar fields and at least two years of practical experience in the field of media processing and/or transmission. More education can supplement for less practical experience, and vice versa. Pet. 5. Patent Owner does not dispute Petitioner’s description. Prelim. Resp. 23. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the description offered by Petitioner. It is not disputed by the Patent Owner and is consistent with the ’185 patent and the asserted prior art.” slip op. at 8

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

    “C. Claim Construction In inter partes reviews, the Board construes claims using the same claim construction standard employed in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). The “words of a claim ‘are generally given their ordinary and customary meaning,’” as would have been understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Neither Petitioner nor Patent Owner requests express claim construction. Pet. 5; Prelim. Resp. 23. And, no need exists to expressly construe any claim terms to resolve this dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,875,185
• Sonos, Inc v. Google LLCInstitution denied
  PTAB · Feb 8, 2024 · IPR2023-01288 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that Rosenberger anticipated any challenged claim or that Rosenberger and Jang rendered claims 2, 3, 9, 10, and 12 obvious.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1358, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art “would have had the equivalent of a fouryear degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of speech processing, or an equivalent level of skill, knowledge, and experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–39). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “construction in a footnote addressing “perform[ing] speech recognition.” Prelim. Resp. 14 n.1 (“Patent Owner does not concede to the correctness of the ITC’s construction of ‘perform[ing] speech recognition,’ particularly its finding that ‘hotword[6] detection’ necessarily includes speech 5 In the Initial Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (Ex. 2001 (“Initial Determination”)), the plain and ordinary meaning of “perform speech recognition” was construed “to include[] hotword detection” (id. at 49). 6 According to the ’748 patent, a “hotword” is a predetermined audio command or audio trigger such as “Hello phone,” “Okay car,” “Hello device,” “Give me directions,” “what’s the time,” “make a call,” “go silent,” or “play.” Ex. 1001, 2:66–67, 4:12, 5:14–15, 5:40, 9:61–62, 10:6–7, 20:16– recognition.”). Although Patent Owner does not “concede to the correctness” of this construction in this proceeding, Patent Owner does not argue what, if anything, is wrong with this construction. Before the ITC, Patent Owner argued that the plain and ordinary meaning of “[perform/performing] speech recognition” was not broad enough to cover “hotword detection.” See Ex. 2001, 30. The ITC found Patent Owner’s position to be “untenable” because hotword detection “is a form of speech recognition in every ordinary sense.” Id. at 31. We agree with the ITC that the plain and ordinary meaning of performing speech recognition includes hotword detection. Moreover, the ’748 patent describes using speech recognition for hotword detection. Ex. 1001, 4:57–63 (“[A]udio input modules may be operable to utilize speech recognition techniques . . . to determine whether the obtained audio input includes a predetermined audio command.”). We apply the plain and ordinary meaning and consider the meaning of “perform/performing speech recognition” to include hotword detection. 17, 20:20–21, 24:29–30, 24:38–39, 24:40–41, 24:43–44, 24:51, 25:3–4. The ’748 patent further provides:” slip op. at 15

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

    “positions relating to this limitation. See Pet. 33–34 (Ex. 1003, 8:20–39); Prelim. Resp. 4–5 (citing Ex. 1003, 8:20–32). The cited passage in Rosenberger states: Upon receiving and recognizing a speech trigger phrase and determining that it is in a better position to handle subsequent user interaction than any other device that simultaneously recognized the same speech trigger phrase (see device coordination discussion below) . . . the device beeps, changes its status light 34 or plays a prerecorded or synthesized audio message (e.g. "How may I help you?") through speaker 19 and/ or 20 to prompt the user to say one of the speech commands from a known vocabulary or grammar stored in the speech pattern memory 14. Ex. 1003, 8:20–32 (emphasis added). This passage indicates speech recognition to recognize the trigger phrase (i.e., hotword detection) is performed by all the devices that receive the trigger phrase prior to any coordination determination. This passage supports Patent Owner’s argument and contradicts Petitioner’s contention that Rosenberger discloses this limitation. We agree with Patent Owner that the flaw in Petitioner’s reasoning is that the devices disclosed in Rosenberger upon receiving a spoken audio input do not make any determination as to whether speech recognition, particularly hotword detection, should be performed. All the devices perform speech recognition by performing hotword detection before the coordination determination is made. See Ex. 1003, 8:20–32.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,632,748
• Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01118 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Sony did not show a reasonable likelihood that claim 1 was obvious over Avendano ’880 and Hou; the dependent-claim challenges also failed.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

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

    “Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 34 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00279 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3, 1. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00279, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2

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

    “The Petition construes no terms. Pet. 7. The Preliminary Response proposes construing “filter, wherein the filter is formed,” as “adaptive filter comprising a signal ratio, wherein the filter is formed.” Prelim. Resp. 12– 14. We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 7

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,321,213
• Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution denied
  PTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.

  RulingsInstitution decision

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

    “Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14

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

    “We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8

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

    “We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,321,213
• Trend Micro, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Dec 1, 2023 · IPR2023-00799 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been unpatentable as obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Patent Owner that Petitioner has not addressed limitation 1[f] persuasively. Pet. 43–44; Prelim. Resp. 19–21. Even assuming Petitioner is correct that Miliefsky’s network-based assets list constitutes “temporal events,” as recited in claim 1, Petitioner does not persuasively address certain other aspects of the claim language. For example, Petitioner does not support sufficiently its contention that “Miliefsky teaches ‘generating . . . temporal events based at least in part on analyzing the third party network endpoint assessments.’” Pet. 44 (citing Ex. 1003 ¶¶ 198–201) (emphasis added). Petitioner cites Miliefsky’s paragraph 94, which does not expressly disclose generating the alleged temporal events (the network-based assets list) based at least in part on analyzing third party network endpoint assessments. Ex. 1006 ¶ 94; Pet. 44. According to Petitioner, however, Miliefsky discloses “configuration data collected or processed at particular time (‘temporal events’) can be combined with vulnerability assessment data and include related data, which . . . is disclosed as being sourced from third parties.” Pet. 44 (citing Ex. 1003 ¶ 201). Petitioner also argues that “internal assessments such as the generated network asset list are disclosed as being combined with external assessments to provide feedback to each other (e.g., to produce control lists).” Id. (citing Ex. 1003 ¶¶ 202–203; Ex. 1006 ¶ 94). Even if accurate, these arguments do not show sufficiently for institution that Miliefsky teaches generating temporal events based at least in arguments indicate that Miliefsky discloses combining the alleged temporal events (the network-based assets list) with third party network endpoint assessments. As Patent Owner observes, combining temporal events with endpoint assessments logically would not constitute generating the temporal events based on the endpoint assessments. Prelim. Resp. 20–21.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “patent “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10 (citing Ex. 1003 ¶ 83). Petitioner adds that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “B. CLAIM CONSTRUCTION We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 10–11; Prelim. Resp. 11. Having considered the record, we agree with the parties that no explicit claim construction is Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. GROUND 1 – ALLEGED OBVIOUSNESS OVER MUKHERJEE AND MILIEFSKY” slip op. at 11

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

    “Patent Owner that Petitioner has not persuasively addressed limitation 1[g]’s requirement for “correlating . . . the received endpoint events and the generated temporal events.” Ex. 1001, 40:6–7; Pet. 45–47. Petitioner does not provide a sufficiently persuasive, objective basis for its contention that it would have been obvious to include Miliefsky’s network-based assets list “into the correlation operations of Mukherjee.” Pet. 46 (citing Ex. 1003 ¶ 216). Petitioner argues that Mukherjee suggests such a modification in the following passage: The fourth layer of the model introduces the event in context. There are two kinds of context: temporal and spatial. As an example of temporal context, behavior which is unremarkable during standard working hours may be suspicious during off-hours [35]. The IDM, therefore, allows for the application of information about wall-clock time to the events it is considering. Wall-clock time refers to information about the time of day, weekdays versus weekends and holidays, as well as periods when an increase in activity is expected. In addition to the consideration of external temporal context, the expert system uses time windows to correlate events occurring in temporal proximity. This notion of temporal proximity implements the heuristic that a call to the UNIX who command followed closely by a login or logout is more likely to be related to an intrusion than either of those events occurring alone. Such related patterns of behavior are also referred to as attack signatures [23,24]. Ex. 1005, 13 (emphases added consistent with emphases in Petition); Pet. 45–46. Petitioner does not sufficiently support its position that this passage of Mukherjee would have suggested adding a network-based assets list into certain information, but not an assets list. Ex. 1005, 13. And, as Patent Owner notes, the only “correlat[ing]” mentioned in the cited passage is “correlat[ing] events occurring in temporal proximity.” Id.; Prelim. Resp. 21–22. Petitioner does not provide a persuasive, objective basis for its view that these disclosures suggest including Miliefsky’s network-based assets list into the process of correlating temporally proximate events. Pet. 46. Petitioner does not, for example, persuasively show for institution how or why Mukherjee’s discussion of correlating temporally proximate events and/or its reference to attack signatures allegedly would have suggested correlating Miliefsky’s network-based assets list and endpoint events. Id. Nor does Dr. Nielson’s testimony substantiate Petitioner’s argument that the cited passage of Mukherjee suggests the proposed modification. Id. (citing Ex. 1003 ¶ 216). Indeed, Dr. Nielson does not testify that Mukherjee suggests including a network-based assets list in correlation operations. E.g., Ex. 1003 ¶ 216. Moreover, Petitioner and Dr. Nielson do not otherwise sufficiently support Petitioner’s position that it would have been obvious to correlate Miliefsky’s network-based assets list and Mukherjee’s events. Pet. 46; Ex. 1003 ¶¶ 209–220. Consistent with Patent Owner’s arguments, Petitioner and Dr. Nielson do not articulate or substantiate a sufficiently persuasive reason that a person of ordinary skill in the art would have had for modifying Mukherjee to correlate Miliefsky’s network-based assets list and Mukherjee’s temporally proximate events. E.g., Pet. 45–47; Ex. 1003 ¶¶ 209–220; Prelim. Resp. 21–22. Petitioner and Dr. Nielson do not, for example, explain how or why a person of ordinary skill in the art would have” slip op. at 22

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,092,616
• Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Nov 21, 2023 · IPR2023-00706 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been obvious over Das.

  RulingsInstitution decision

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

    “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). 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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent “would have been a person with at least a bachelor’s degree in computer science, computer engineering, or electrical engineering or in a related field and at least three years of experience in computer network security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “Both parties express that we do not need to construe any claim language explicitly. Pet. 6; Prelim. Resp. 13. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner does not show sufficiently that Das teaches or would have rendered obvious the claimed use of “network endpoint assessments.” Petitioner does not substantiate its conclusory argument that Das’s network threat information constitutes the claimed “network endpoint assessments.” Pet. 21. In support of this argument, Petitioner cites Dr. Jeffay’s testimony, but that testimony is entitled to little weight because it is verbatim to Petitioner’s conclusory argument. Compare Pet. 21 with Ex. 1003 ¶ 66; Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”). Neither Petitioner nor Dr. Jeffay provides persuasive reasoning or evidence that Das’s network threat information relates to endpoints. Pet. 21–22; Ex. 1003 ¶¶ 66–67. Moreover, even if we assume Das’s network threat information somehow relates to endpoints, Petitioner and Dr. Jeffay do not provide persuasive reasoning or evidence that the information constitutes endpoint assessments, specifically. Pet. 21–22; Ex. 1003 ¶¶ 66–67.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,092,616
• Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Nov 21, 2023 · IPR2023-00705 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Palo Alto Networks did not show a reasonable likelihood that claims 1–5 would have been obvious over Das and Overcash.

  RulingsInstitution decision

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

    “reasonable likelihood of establishing that independent claim 1 would have been obvious over Das and Overcash. Petitioner’s arguments and evidence regarding dependent claims 2–5 do not cure the deficiencies in Petitioner’s challenge to claim 1. Pet. 22–44. Accordingly, Petitioner does not demonstrate a reasonable likelihood of establishing obviousness of any of the challenged claims. III. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’948 patent, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’948 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9

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

    “CLAIM INTERPRETATION B. We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 5–6; Prelim. Resp. 10. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We agree with Patent Owner that Petitioner has not supported sufficiently its position that Das’s reputation engine 20 constitutes both “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. The portions of Das cited by Petitioner do not disclose that reputation engine 20 is a matrix. Ex. 1006 ¶¶ 18, 23–24, 48, 55, 58; Pet. 12–15. And Petitioner does not provide sufficiently persuasive, objective support for its contention that an engine constitutes a matrix. Pet. 14–15 (citing Ex. 1006 ¶ 55; Ex. 1003 ¶¶ 57–58). To the extent Petitioner implies that reputation engine 20 is a matrix because it correlates and otherwise processes information when generating and modifying reputation scores, Petitioner does not explain persuasively why performing 4 The Preliminary Response cites “Ex. 2002, 8-10,” but this appears to be a typographical error, as Exhibit 2003 is the parties’ district court Joint Claim Construction and Prehearing Statement. those actions would make an engine a matrix. Id. Indeed, in tension with Petitioner’s conclusory position that an engine is a matrix, the ’948 patent discloses using more than one “correlation matrix,” in addition to a “correlation engine,” suggesting that an engine is not a matrix. Ex. 1001, 15:14–19 (“event correlation matrix 633”), 15:38–41 (“risk correlation matrix 411”), 15:29–35 (“system event correlator 410 can be implemented as a correlation engine”). Moreover, even if Petitioner had persuasively supported its position that an engine is a matrix, Petitioner does not provide sufficiently persuasive, objective support for its contention that Das’s single reputation engine 20 constitutes two matrices. Id. For the foregoing reasons, Petitioner does not provide persuasive arguments and evidence that the cited prior art teaches or suggests “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. Nor does Petitioner provide persuasive arguments and evidence that this claim limitation otherwise would have been obvious over the cited prior art, as Petitioner does not argue, much less substantiate, that it would have been obvious to modify the prior art’s disclosures to use “an event correlation matrix” and “a risk correlation matrix.” See, e.g., Pet. 12–15.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,990,948
• Palo Alto Networks, Inc. v. BT Americas Inc.Institution denied
  PTAB · Nov 17, 2023 · IPR2023-00888 · APJ Georgianna W Braden · IPR · Institution

  The Board denied institution on all grounds because the petition did not show a reasonable likelihood that any of claims 1–42 would have been obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. 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; see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

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

    “on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assocs. and citation omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally is not treated as limiting the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Our reviewing court has explained, however, that a “conclusion that some preamble language is limiting does not imply that other preamble language, or the entire preamble, is limiting.” Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020); see TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322-23 (Fed. Cir. 2015) (holding the court erred in determining that it had to construe the entire preamble if it construed a portion of it), citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985), overruled in part on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed. Cir. 1998) (en banc in part). The Court in Cochlear Bone Anchored specifically held that even when a phrase in a preamble provides a necessary structure for a claim, that preamble structure does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention. 958 F.3d at 1355. Based on the current record, we find at least part of the preamble limiting because (1) the claim limitation relating to “probe,” relies on the preamble for antecedent basis. Accordingly, we find at least this portion of and is limiting. We need not reach a determination on whether the entirety of the preamble is limiting because at this stage of the proceeding, we are satisfied Petitioner has shown that Duvall in combination with the teachings of Chu would have render the preamble obvious to a person of ordinary skill in the art at the critical time.” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that limitation b) requires a filtering process that produces the claimed residue from the filtering, followed by an analysis of the post-filtering residue. We also agree that the filtering and analysis is performed on status data. Nonetheless, as discussed in detail below, we find Duvall teaches the disputed limitation even under Patent Owner’s construction. We do not construe any other limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’237 patent, “would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience.” Pet. 12 (citing Ex. 1003 ¶¶ 61–62). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. Prelim. Resp. 28. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’237 Patent and the prior art of record, except that we eliminate vagueness as to the stated amount of academic or industry experience.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,159,237

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.