• Cisco Systems, Inc. v. Securityprofiling, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01242 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 19 and 20 were obvious over Willebeek-LeMair.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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 do not institute an inter partes review.” slip op. at 2

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

    “However, unaddressed is the claim’s requirement that each of the two of the plurality of mitigation techniques be automatically applied “to the at least one device.” Throughout the discussion of the limitations of claim 14, and again with respect to remaining challenged claim 19, Petitioner only describes the mitigation techniques to be taught by the application of signatures to the intrusion detector functionality and the firewalling defense system. However, Petitioner also asserts that the “plurality of devices” of the claim are the devices within the network being protected. See Pet. 26 (in arguing that Willebeek-LeMair teaches “code for: receiving information in connection with at least one of a plurality of devices,” (14.4) citing network discovery functionality to discover vulnerabilities in a scan of “machines” in protected network 14). Thus, Petitioner fails to show how Willebeek-LeMair teaches or suggests “automatically applying at least two of the plurality of mitigation techniques . . . to the at least one device,” that is, to a device in network 14.” slip op. at 20

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

    “Neither Petitioner nor Patent Owner explicitly requests claim construction. Pet. 10–11; see Prelim. Resp. Patent Owner’s Preliminary Response raises certain implicit claim construction issues. Additionally, we acknowledge that, in a related litigation, a district court has issued a Markman order construing certain claims of the ’431 patent. Ex. 1016. However, in this instance, no resolution of claim construction issues is necessary to resolve the controversy, and thus, we do not construe any claim terms. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 11

  • Adverse judgmentOther

    “requesting inter partes review of claims 1, 2, 4–12, and 14–20 of U.S. Patent No. 9,100,431 B2. Ex. 1001 (“the ’431 patent”). After the Petition was filed, SecurityProfiling, LLC (“Patent Owner”) filed a Statutory Disclaimer of claims 1, 2, 4–12, and 14–18. See Ex. 2002. Thus, claims 19 and 20 for our consideration.1 Patent Owner also filed a Preliminary Response opposing institution of review as to the remaining challenged claims 19 and 20. Paper 6 (“Prelim. Resp.”).” slip op. at 1

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,100,431
• Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing denied
  PTAB · Oct 30, 2020 · IPR2019-01069 · APJ Trevor M Jefferson · IPR · Rehearing

  The Board denied Amazon’s rehearing request, leaving institution denied for claims 9–21 because the Petition did not show a reasonable likelihood of prevailing on its obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3

  • Prior constructionPrior construction adoptedDecided for patent owner

    “system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 5

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

    “to establish a reasonable likelihood of prevailing, in showing that claims 9– 21 would have been obvious over Livowsky;1 claims 10–12 and 14–16 would have been obvious over Livowsky and Shwartz;2 claims 9–21 would have been obvious over Shwartz and Livowsky; claims 9–21 would have been obvious over Shwartz and Weber;3 and claims 9–21 would have been obvious over Meng4 and Zhang.5 Dec. 17–18, 21–22, 23–24. For the reasons below, the Request for Rehearing is denied.” slip op. at 2

  Claim construction
  Patents in suitUS 7,177,798
• Amazon.Com, Inc. v. Rensselaer Polytechnic InstituteRehearing denied
  PTAB · Oct 30, 2020 · IPR2019-01068 · APJ Trevor M Jefferson · IPR · Rehearing

  The Board denied Amazon’s rehearing request, leaving in place the denial of institution on claims 1–8 because Petitioner did not show the Board misapprehended the construction or prior-art evidence.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “overlooked, and the place where each matter was previously addressed” in a paper of record. 37 C.F.R. § 42.71(d) (2019) (emphasis added). When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted).” slip op. at 3

  • Prior constructionPrior construction adoptedDecided for patent owner

    “interpretation of the claim construction in the Apple IPR. See Req. Reh’g 3. The Apple IPR cites the embodiment from the ’798 patent specification (Ex. 1001, 5:36–38, 16:52–17:5). Apple IPR 5–6. The Board in the Apple IPR expressly clarified that in the case information construction “‘instances of use’ of the system [did not] mean indications cover instances of use of the system, e.g. how the system interprets words or phrases.” Apple IPR 6. Thus, the Apple IPR Board adopted Patent Owner’s argument that as applied to the prior art, the term “case” in “case information” requires “uses of the system contemplated by the invention, not uses of any other natural language processing system.” Apple IPR 6. The Board rejected that such prior use was found in rules regarding how the system interprets current word or phrase input. Id. We find that the Apple IPR discussed a user’s selection among possible choices, but also addressed that the “case” required use of the system of the ’798 invention. Id. at 5–6. Thus, we do not agree we misapprehended the meaning of the claim language. Req. Reh’g 2.” slip op. at 4

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

    “information” to exclude clarifications from users. Id. at 5–6, 7–11. Petitioner argues that our Institution Decision adopts Patent Owner’s narrow construction and finds that “clarifying prompts” in grounds including Weber are not “case information.” Id. at 7–8. Our Institution Decision found that Petitioner did not persuasively and sufficiently assert how the prior art disclosed the “case information.” Dec 19–20. Our determination was based on the sufficiency of Petitioner’s evidence and argument in the regarding whether Weber’s prompting the user for information, which was contested by Patent Owner, teaches or suggests “information about prior instances of use of the natural language processing method.” Dec. 19–20 (emphasis added). Petitioner’s arguments does not identify any evidence we overlooked or misapprehended. Req. Reh’g 7–8. Instead, Petitioner characterizes our Institution Decision as broadly excluding user prompts. Our determination was based on the full claim construction, which is supported by the Apple IPR’s emphasis of “prior instances of use of the natural language processing method.” Apple IPR 5–6; Dec. 19–20.” slip op. at 5

  Claim construction
  Patents in suitUS 7,177,798
• Microsoft Corporation v. Uniloc 2017 LLCInstitution denied
  PTAB · May 6, 2020 · IPR2020-00101 · APJ Christopher L Ogden · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood that claims 1–15 were obvious over Olkin and Kim, particularly as to the required confirmation step.

  RulingsInstitution decision

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

    “For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Citing testimony of Dr. Houh, Microsoft argues that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical and/or computer engineering, or equivalent training, and two years of experience in computer networking and information security.” Pet. 9 (citing Ex. 1008 ¶ 43 (Dr. Houh’s testimony to that effect)). For the purpose of its Preliminary Response, Uniloc does not dispute Microsoft’s assertion. See Prelim. Resp. 10–11. We find that Microsoft’s proposed level of ordinary skill is consistent with the teachings of the ’359 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself may provide evidence as to the appropriate level of ordinary skill). Therefore, we adopt Microsoft’s uncontested formulation as the level of ordinary skill for this decision.” slip op. at 8

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

    “Microsoft contends that the claims of the ’359 patent “do not require proposed constructions that differ from the claim language in order for the Board to compare the prior art to the claims.” Pet. 9. Likewise, Uniloc “contends that no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Prelim. Resp. 10. In light of the parties’ arguments and evidence, we agree with the parties that it is unnecessary to expressly construe any claim terms for our determination of whether to institute an inter partes review. 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))). Nevertheless, our interpretation of the ’359 patent claims is informed by the disclosure and prosecution history, and we will discuss our interpretation of pertinent claim terms in the context of our analysis in the section below.” slip op. at 9

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

    “Finally, Microsoft has not sufficiently explained why a person of ordinary skill in the art would have modified Olkin’s system by adding an independent verification step. Olkin uses “conversation keys,” which are associated with a flow of messages “from a single source to one or more destinations.” Ex. 1003, 21:48–50. In Olkin’s system, the originator sends the messages to members of a recipient list, but the intended recipients on that list need not be authenticated before, or even after, the originator sends the message. See Ex. 1003, 9:55–60 (an intended recipient need not be registered with the system when the originator requests the key); id. at 10:3– 7 (alternatively, the security server “need not be concerned with whether the receivers . . are registered”). Microsoft has not adequately explained why, in Olkin’s system, where messages may be broadcast to multiple recipients before those recipients are even registered, a person of ordinary skill in the art would have had reason to independently verify to the recipients that the originator asked for, and was sent, an encryption key. For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,495,359
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00736 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the asserted combinations taught the claimed conversational protocol.

  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 evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’128 patent is unpatentable. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • BurdenDenied

    “event types” as recited in claim 1. See Pet. 12–13. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. Petitioner’s evidence and argument fails to persuasively and adequately explain how the speech acts or performatives as described in Nodine are the events recited in the challenged claims. Although both Finin and Bayardo define and disclose performatives (Ex. 1016, 297; Ex. 1017, 197), Petitioner does not discuss these disclosures or explain sufficiently how the speech acts/performatives in Nodine, Finin, and Bayardo alone or combination teach the “layer of conversational protocol defined by event types and parameter lists associated with one or more events, and wherein the parameter lists further refine the one or more events” limitation of claim 22 and 45. Petitioner asserts that “Nodine in combination with Steiner and Finin discloses or suggests this limitation” of claim 45 (Pet. 49), but Petitioner does not identify adequately any reliance on Steiner for this limitation (id. at 28–33, 49). slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “in the art at the time of the invention of the ’128 patent would have had at least a Bachelor’s degree in computer science, electrical engineering, or a similar discipline, and one to two years of work experience in networked computer systems or a related area. Ex. 1002 ¶ 14; Pet. 4. At this stage of the proceeding, Patent Owner does not dispute Dr. Olsen’s assessment of the level of ordinary skill in the art. Prelim. Resp. 6.” slip op. at 9

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

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 12–13. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,036,128
• Google LLC v. Ipa Technologies Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00735 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted combinations rendered claim 1 and its dependent claims obvious.

  RulingsInstitution decision

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

    “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim. slip op. at 14

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

    “35 U.S.C. § 325(d) because (1) it relies on similar art that applicant overcame during prosecution of the parent ’115 patent, and (2) it is duplicative of the co-pending petition in IPR2019-00733. Prelim. Resp. 48– 61. Because, for reasons discussed below, we deny the Petition on other grounds, we need not determine whether it also would be appropriate to deny the Petition pursuant to our discretion under § 325(d).” slip op. at 8

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

    “The parties do not propose a construction for any claim term. Petitioner avers that no express constructions are required. Pet. 14. Patent Owner argues that Petitioner’s failure to set forth its construction of any term is reason to deny the Petition, and Patent Owner does not propose a construction for any term. Prelim. Resp. 6. On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 10

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

    “Pet. 25. Petitioner’s arguments offer conclusory statements that equate Nodine’s speech act/performative types to “event types” recited in the challenged claims, and the parameters associated with Nodine’s speech act/performatives with “one or more of the events” recited in the challenged claims. See id. Petitioner argues that Nodine thus discloses the conversational protocols defined by events. Id.; see Ex. 1002 ¶¶ 106–107. In sum, Petitioner maps Nodine’s “speech acts” or “performatives” to the “events” recited in claim 1. We note that Petitioner does not offer a construction for “event” or “event types” as recited in claim 1. See Pet. 13–14. Petitioner also does not explain persuasively or sufficiently why or how Nodine’s “speech acts” or “performatives” qualify as the “events” recited in the claim. Although “the [prior art] reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required to teach a claim limitation, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), neither Petitioner nor its declarant, Dr. Olsen, explains persuasively or adequately why a person of ordinary skill in the art would have understood Nodine’s “speech acts” or “performatives” as teaching or suggesting the “events” recited in the independent claim.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,036,128
• RPX Corporation v. Spycurity LLCRehearing denied
  PTAB · Oct 10, 2018 · IPR2018-00304 · APJ Aaron W Moore · IPR · Rehearing

  The Board denied RPX’s rehearing request, finding no abuse of discretion in denying institution because the Petition lacked a reasoned basis to substitute Dial-Up for Crawford’s call-back connection.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters that were misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); The Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2

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

    “Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3

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

    “Why the Petition Failed The Decision found that Petitioner’s combination failed due to the “absence of articulated, rational reasoning to support the substitution of the Dial-Up method of connection for the ‘call back’ described in Crawford.” Decision 14. In other words, the Decision found that Petitioner failed to provide a sufficient rationale for substituting the Dial-Up connection for the conventional, point-to-point modem connection described in the Crawford embodiment that used the ring pattern to cause the user system to call the backup system. That problem remains, as the Request for Rehearing does not address the issue. The combination thus fails before one reaches the question of where in the combination a connection to the Internet might be found. This alone is a sufficient reason to deny the Request for Rehearing.” slip op. at 3

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

    “Claim Construction Petitioner’s argument that we construed the claims to “require[e] that the connection between the host system and the Internet itself be made via the Internet” (Req. Reh’g 2) is incorrect. Petitioner appears to confuse the fact that we found the claims satisfied by such an arrangement in the combination to mean that we required the claims to have that arrangement. Our Decision understood the Petition’s combination to contemplate Dial-Up IP being used to connect to the Internet and then to the backup service over the Internet (e.g., via relay.cs.net). See Decision 12. That understanding was drawn from the Petition, which states, for example, “Crawford, in view of Dial-Up IP, teaches creating a connection between the customer computer . . . and the Internet (through an ISP server) using a communication device . . . connected to the host system.” Petition 34 (emphasis added). Critically, however, the arrangement considered in the Decision included a “connection between the host system and the Internet,” as claimed, specifically an Internet link between the user and the backup system. Because we found the Internet connection claim language would be satisfied in the version of the combination we considered, Petitioner has no reasoned basis for complaining about the constructions.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 5,809,118
• Inauth, Inc. v. Msignia, Inc.Institution denied
  PTAB · May 10, 2018 · IPR2018-00150 · APJ James B Arpin · IPR · Institution

  The Board denied institution on claims 1–25 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12

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

    “Petitioner and Patent Owner agree that only the term: “generating a challenge” recited in each independent claim requires express construction. Pet. 13; Prelim. Resp. 4–5; see Paper 11. Moreover, Petitioner and Patent Owner agree that “generating a challenge” should be construed as “generating a request for information.” Pet. 13; Prelim. Resp. 4. Nevertheless, Patent Owner further clarifies that the “challenge” is a challenge to the computer that is to be authenticated. Prelim. Resp. 4. We believe that this clarification is apparent from the context in which the construed term is used in the independent claims. See Pet. 13 (“As used in the specification, the challenge is a request to the computer to provide information based on selected minutia.”). On this record and for purposes of this Decision, we adopt the parties’ agreed upon construction, in view of Patent Owner’s clarification that the challenge is to the computer seeking authentication, as the broadest reasonable interpretation of this term.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12

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

    “With respect to Claims 1, 24, and 25, to the extent Patent Owner contends that Etchegoyen does not anticipate because it does not disclose a single embodiment that uses both the request/response protocol (i.e., challenge/response protocol) to obtain a fingerprint and the typical-upgrade ratio to analyze the fingerprint, it would have been obvious to a [person of ordinary skill in the art] to modify the embodiments disclosed to include both aspects. Id. at 37 (citing Ex. 1003 ¶ 151). Patent Owner contends, however, that Etchegoyen fails to disclose the limitations of claim 1 relating to “anticipated changes” including “storing information associated with one or more identities, wherein the information stored for an identity includes (a) data values associated with that identity; and (b) information regarding anticipated changes to one or more of the stored data values associated with that identity” and “determining whether the response is allowable, wherein such determining comprises using the stored information regarding anticipated changes to the stored data values associated with the identity to determine whether a data value used to form the response is based on an acceptable change to a corresponding stored data value.” Prelim. Resp. 7– 11. For the reasons discussed below, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its assertion that Etchegoyen discloses each and every element or teaches or suggests all of the limitations recited in independent claims 1, 24, and 25.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,559,852
• Samsung Electronics Co., Ltd. v. Huawei Technologies Co., Ltd.Institution denied
  PTAB · Dec 4, 2017 · IPR2017-01465 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Petitioner did not show Baldemair was entitled to its provisional's priority date, so it was not shown to be prior art for claims 3–5 and 9–11.

  RulingsInstitution decision

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

    “Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 6

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “To show that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional, Petitioner must show that the claims of Baldemair are supported by the Baldemair Provisional. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (“A reference patent is only entitled to claim the benefit of priority to the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). Recognizing this requirement (Pet. 18), Petitioner cites several passages from the Baldemair Provisional, and asserts that the cited passages “provide[] support for the relevant claims in Baldemair, such as claim 1.” Id. at 18–19.” slip op. at 5

  • BurdenDecided for patent owner

    “Baldemair Provisional may disclose the limitations recited in claim 1 of Baldemair, Petitioner does not explain how those cited portions disclose the claim limitations. As Patent Owner points out, claim 1 of Baldemair has several limitations, none of which Petitioner specifically discusses with respect to any of the cited passages from the Baldemair Provisional. Prelim. Resp. 21–22. Petitioner should not expect the Board to cull the evidence necessary to support Petitioner’s arguments. Based on the record before us, we find that Petitioner has not linked the Baldemair Provisional with any of the Baldemair claims in a manner sufficient to meet its burden. Accordingly, Petitioner has not shown that Baldemair is entitled to the benefit of priority to the filing date of the Baldemair Provisional. Therefore, Petitioner has not shown that Baldemair is prior art to the ’587 patent. Because each of Petitioner’s asserted grounds relies on Baldemair, Petitioner has not demonstrated on the record before us a reasonable likelihood of showing that claims 3–5 and 9–11 would have been obvious over (1) Baldemair; (2) Baldemair and TS 36.213; or (3) Damnjanovic and Baldemair.” slip op. at 5

  § 102 anticipation
  Patents in suitUS 8,885,587
• Cree, Inc. v. Optolum, Inc.Institution denied
  PTAB · Dec 4, 2017 · IPR2017-01511 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Begemann did not disclose the claimed heat-conduction-to-contained-fluid limitation.

  RulingsInstitution decision

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

    “evidence. As explained below and given the evidence of record, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertions that Begemann anticipates either of claims 17 or 30. 1. Principles of Law” slip op. at 8

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

    “136 S. Ct. 2131, 2144–46 (2016) (upholding the Board’s use of the broadest reasonable interpretation standard in Inter Partes Review proceedings). Under the broadest reasonable interpretation standard, and absent any special definitions, claims terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or phrases must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Petitioner advances interpretations of the claim terms “elongate,” “thermally conductive member,” and “heat dissipation protrusions.” Pet. 17–18. In turn, Patent Owner advances interpretations of “thermally conductive member,” “heat dissipation protrusions,” and “configured to.” Prelim. Resp. 17–21. Having considered the evidence of record and as reflected in the discussion below, we determine that express construction of these terms is not necessary for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 7

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

    “A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984)). The Federal Circuit has also explained, however, that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 8

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

    “likewise require that the thermally conductive member includes the “configured to” limitation and “one or more heat dissipation protrusions, at least one of said heat dissipation protrusions being carried on said elongate member outer surface” limitations discussed above. Ex. 1001 at 4:47–50, 5:60–63. In addition to the anticipation arguments for claims 17 and 30, Petitioner argues in the alternative, “[s]hould it be determined that Begemann does not disclose the claimed heat dissipation protrusions, then claim 17 is obvious in view of Begemann in combination with English” (Pet. 28) and “claim 30 is obvious in view of Begemann in combination with English . . . for reasons previously explained . . . for claim 17” (Pet. 59). According to Petitioner, English expressly discloses the placement of cooling fins on an exterior of a hollow, metal base portion of an elongated, thermally conductive metal support to further enhance heat dissipation for cooling LEDs mounted on the metal support. Pet. 31. Petitioner argues a person of ordinary skill would have been motivated to provide the cooling fins of the lamp of English to the outer surface of Begemann’s gear column to enhance the performance and/or efficiency of cooling the LEDs by enhancing heat dissipation away from the gear column, substrate, and LEDs “to air circulating inside and at the outer surface of the gear column 1.” Pet. 31 (citing Ex. 1008 ¶¶ 93–94). Further, Petitioner presents the following annotated copy of Begemann’s Figure 1 to illustrate its proposed modification of Begemann’s gear column using English’s fins: Petitioner’s annotated version of Begemann Figure 1 with accompanying text that describes providing cooling fins to the outer surface of Begemann’s gear column 1. Pet. 33 (citing Ex. 1003 at 4:6–9). As Patent Owner argues (Prelim. Resp. 39), Petitioner does not rely on English to meet the “configured to” limitation for either of claim 17 or 30 (see, e.g., Pet. 26–27, 55–56 (citing only Begemann for the “configure to” limitation)). Having determined above that Begemann fails to disclose the “configured to” limitation, Petitioner’s reliance on English to satisfy the heat dissipation protrusions limitation fails to cure the noted deficiencies in Begemann with regards to the “configured to” limitation of claims 17 and 30 of the ’028 Patent.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,242,028

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.