- Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01083 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Shivamoggi disclosed the required natural-language list of abnormal connections, including for the dependent-claim grounds.
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 on at least one of the challenged claims of the ’554 patent. We do not institute inter partes review as to the challenged claims of the ’554 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in an academic area emphasizing computer science (i.e. computer science, computer information systems, computer engineering, etc.) or cybersecurity, with at least two years of experience in the field of cybersecurity.” Pet. 6 (citing Ex. 1003 ¶ 49). Petitioner further argues that “additional education or experience might substitute for these requirements.” Id. Patent Owner does not contest Petitioner’s proposed definition of a POSITA at this stage of the proceeding. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’554 patent and the cited prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim terms need to be construed to resolve any issues in controversy in the Petition.” Pet. 7 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that “[n]o constructions are necessary to deny institution because denial is warranted for numerous reasons that do not depend on claim construction, as further detailed below.” Prelim. Resp. 2. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties.” slip op. at 8
- BurdenNot shown unpatentable
“Having reviewed the record presently before us, we agree with Patent Owner. Limitation 1[d] requires generating “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects.” The ʼ554 patent states that “[n]etwork insights are natural-language representations of aspects of the network graph.” 1 Ex. 1001, 10:15–17. Petitioner acknowledges that the recited “insights” are “natural-language representations.” Pet. 26 (citing Ex. 1001, 10:16–18). Dr. Easttom also agrees that insights are natural-language representations. Ex. 1003 ¶ 100 (testifying that “Shivamoggi’s insights are provided to the user as textual descriptions (i.e. natural-language representations).”). As an 1 The parties do not address whether the “wherein” clause of limitation 1[d] runs afoul of the printed matter doctrine. “[T]he petition must set forth . . . . [h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104. Even though “insights” are described in the ʼ554 patent as “natural-language representations of aspects of the network graph” (Ex. 1001, 10:15–17), Petitioner does not construe “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects,” as “printed matter” that may be disregarded because it is “not functionally related to the substrate.” See Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) (“‘Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.’. . . For example, in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) there was no functional relationship between claimed instructions and a diagnostic kit, as the instructions ‘in no way depend[ed] on the kit, and the kit [did] not depend on the’ instructions.” (quoting Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Because the parties have not addressed it, we decline to consider if the printed matter doctrine applies here. “virtual machine one to load balancer five, where port eighty is routed to port 1337 on virtual machine one, then from load balancer five to firewall two, where port eighty of firewall two is open, then from firewall two to subnet sixteen, where subnet sixteen has a network address of 10.0.1.0/24, then from subnet sixteen virtual network ten, where virtual network ten has a network address of 10.0.0.0/16, then from virtual network ten to virtual network eleven, via peering connection twelve, where peering connection twelve includes a routing rule to virtual network twelve, specifying virtual network twelve's network address, where virtual network twelve's network address is 172.31.0.0/16.” Ex. 1001, 10:31–45 (quotation marks in original). This example illustrates that an insight is provided in natural-language, or textual, format, consistent with the description of an insight in the ʼ554 patent and the testimony of Dr. Easttom. The limitation, which recites “the generated insights include at least a list of abnormal connections,” therefore requires generating a naturallanguage representation of a list of abnormal connections.” slip op. at 18
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 11,722,554 - Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01086 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all challenged claims because Orca did not show a reasonable likelihood of prevailing, based on its unexplained inconsistent positions on a claim term.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review of the challenged claims. B. Real Parties in Interest” slip op. at 2
- Prior constructionPrior construction not adoptedDecided for patent owner
“The Board has recently clarified that “[s]imply noting that the petitioner is adopting a patent owner’s claim construction proposals from district court . . . is not a sufficient reason for advancing different positions in the two forums.” Revvo Techs., Inc. v. Cerebrum Sensor Techs, Inc., IPR2025-00632, Paper 20, 5 (PTAB Nov. 3, 2025) (precedential). In Revvo, as in this case, the petitioner did not propose its own constructions for claim terms in the Petition, but instead accepted the patent owner’s proposed constructions from the related district court litigation. Id. at 2. Although the petitioner had proposed different constructions for the claim terms in district court, it did not explain why it was taking a different position before the Board. Id. The Board’s trial rules “do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a explain why alternative positions are warranted.” Revvo, Paper 20, 3–4 (quoting Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8–9 (PTAB Dec. 13, 2024) (informative)). Petitioner has not sufficiently done so here. Moreover, the fact that Petitioner cannot raise its indefiniteness challenge in an inter partes review is not a sufficient reason to allow Petitioner to take inconsistent claim construction positions before the Board and the district court. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025- 00340, Paper 18, 3 (Nov. 5, 2025) (informative). As explained in the Board’s Tesla decision: Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation. Indeed, the statement amounts to an assertion that a petitioner should be permitted to raise inconsistent invalidity challenges in the two forums. Petitioner’s explanation may have risen to a sufficient level, for example, if Petitioner had shown that, notwithstanding the alleged indefiniteness of the claim term, an ordinarily skilled artisan would understand that the asserted art satisfies the claim limitation (such as if the limitation prescribed a range and only the outer bounds of the range were unclear). Instead, Petitioner argued indefiniteness in the district court and then adopted Patent Owner’s plain and ordinary meaning construction from the district court litigation in its Petition. Allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in” slip op. at 7
Claim constructioncites PhillipsPatents in suitUS 12,001,549 - Google LLC v. Cellular South, Inc.Institution deniedPTAB · Nov 21, 2025 · IPR2025-00877 · APJ William V Saindon · IPR · Institution
The Board denied institution for claims 1–11 because the Zhao-Kouzani combination did not sufficiently show a fractal representation based on landmarks.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 “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 provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’853 patent is unpatentable, and we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“generally known in the art, and that this is acknowledged by the ’853 patent. Pet. 40–41 (citing, e.g., Ex. 1001, 15:40–44). Petitioner asserts that Kouzani touts the benefits of fractal models and that it would have been obvious to use Kouzani’s fractal model as the object model in Zhou. Pet 44 (asserting that “[a] person of ordinary skill would have therefore been motivated to implement Kouzani’s techniques in Zhao’s system”); see also id. 42–45. (entire argument). Patent Owner argues that Kouzani’s fractals would not result in the claimed limitation. Prelim. Resp. 21–23. In particular, Patent Owner points out that Kouzani’s fractals use a block-based fractal system, which do not include “a representation of the object based on landmarks associated with the object” as required by claim 1. Id. at 21–22. Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13 (quoting in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,126,853 - Apple Inc. v. Ferid AllaniInstitution deniedPTAB · Nov 4, 2025 · IPR2025-00856 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–19 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). 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). 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). We determine Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of challenged claims 1–19 of the ’877 patent. Accordingly, the Petition is denied, and no trial is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill at the pertinent time “would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a similar field.” Prelim. Resp. 10. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bederson. Ex. 1003 ¶¶ 32–33, 37–39. Although Patent Owner has proposed a slightly different statement for the level of ordinary skill in the art, Patent Owner does not explain why Petitioner’s proposal is incorrect. We find Petitioner’s proposed level presents a better statement of the level of ordinary skill in the art because it requires experience with web-based information systems and Patent Owner’s proposal does not. As noted above, the ’877 patent relates to a method for accessing information sources and services on the Web. Ex. 1001, 2:4–12. Further, Petitioner’s proposal appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We need not resolve the above-identified dispute, because a different aspect of “beforehand locally stored” is determinative. Read in context, “beforehand locally stored” in both limitations 1(a)(2) and 12(a) refer back to the “preliminary search” action recited in limitation 1(a)(1) and in limitation 12(a) itself, respectively. Thus, we construe “beforehand locally stored” to mean that the selection pages must already be stored within the communication device when the user begins the preliminary search, regardless of whether it was the user or an automated process that downloaded the selection pages to the communication device. This understanding stems from a plain reading of the claim language and does not leave room for reasonable doubt otherwise. Petitioner does not present any reason why the claims do not require the selection pages to have already been stored in the communication device when a user begins the preliminary search. C.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“of the language in these limitations is that the selection pages must be beforehand locally stored, where beforehand is assessed at the time of starting a preliminary search. Based on this construction, Petitioner has not sufficiently shown that Rossman discloses limitation 1(a)(2) and limitation 12(a), even for institution purposes. Petitioner identifies Rossmann’s cards as the claimed selection pages of claims 1 and 12. Pet. 18–19. Rossmann’s cards, however, are not beforehand locally stored on the communication device at the time a user begins a preliminary search for information. Rather, on the record before us, at the time of starting a search for information, the user must request a connection to a server device at a desired host site, which request results in the server device at the host site sending one or more decks each including a plurality of cards to the user’s mobile device. Ex. 1004, 6:26–29; 7:22–27; 7:56–66. Thus, Rossmann’s cards are not beforehand locally stored at the time the user commences a preliminary search. Petitioner’s reliance on Himmel and on King do not make up for this deficiency.” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 8,271,877 - PTAB · Aug 29, 2025 · IPR2025-00479 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over Erskine, Scherzer, or Scherzer and Gillett.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’634 patent challenged in the Petition. Therefore, we do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’634 patent (July 2018), a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar major with at least two years of experience in the field; or a master’s degree with specialization in the field,” where “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 7 (citing Ex. 1003 ¶¶ 12–13). Petitioner further argues that a person of ordinary skill in the art would have had knowledge of “[d]esigning and using systems that include endpoint devices (e.g., client devices) and servers for establishing network connections and data transfer,” “[r]ecognizing and applying the client-server architecture,” and “[u]sing and applying concepts from known telecommunication and networking frameworks, protocols and standards, including TCP/IP, IEEE 802.11, VoIP, cellular systems and other known frameworks and standards.” Id. (citing Ex. 1003 ¶ 14). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’634 patent and the types of problems and solutions described in the ’634 patent and cited prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 4–29 (describing in the “Background” section of the ’634 patent a “network connection between two endpoints” and known methods of reaching “full effective bandwidth capacity” in a network).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner notes that it proposed a construction for the claim term “geographical area” in the district court case, but states that it “do[es] not believe proposing a construction for the term is necessary in this proceeding because the relied upon teachings of the prior art references are consistent with examples of ‘geographical area’ included in the ’634 patent [S]pecification.” Pet. 8. Patent Owner argues that “[t]he Board need not engage in express claim construction at this stage of the proceeding.” Prelim. Resp. 5. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- BurdenNot shown unpatentable
“Petitioner has not shown sufficiently that Erskine teaches or suggests the second requirement of limitation [1c], i.e., “initiating the next network connection . . . with a transmission bandwidth based on the parameter values for the past network connection.” Petitioner’s theory is that (1) the QoS parameters in Erskine are for a “past” connection from one zone to another, (2) the sliding maximum interzone bandwidth is “based on” the QoS parameters, and (3) a new call only proceeds if the transmission bandwidth needed for the call added to the current bandwidth being used over the interzone link is less than the sliding maximum interzone bandwidth, so Erskine therefore teaches a call with a transmission bandwidth determined “based on” the sliding maximum interzone bandwidth (which in turn is determined “based on” the QoS parameters). See Pet. 27–28; Ex. 1003 ¶¶ 59–60 (similar testimony from Dr. Crovella). As Patent Owner points out, however, Erskine only makes “a binary, accept/reject decision as to whether to allow a new call to proceed based on a comparison between the bandwidth needed for the call and a predetermined ‘sliding maximum interzone bandwidth value.’” See Prelim. Resp. 6–7. Specifically, the additional bandwidth that would be needed for the call is added to the current bandwidth being used on the interzone link; if the sum of those values is less than the sliding maximum interzone bandwidth for the link, the call “proceeds”; otherwise, it is “blocked.” Ex. 1004, col. 4, ll. 36–40, col. 6, l. 55–col. 7, l. 10, col. 8, ll. 36–43, col. 9, ll. 9–26, col. 10, ll. 23–25 (the sum is compared to the sliding maximum interzone bandwidth “to determine whether enough bandwidth is available to proceed with the new call”), Fig. 3 (steps 308, 310, and 312). Erskine repeatedly refers to the bandwidth for the new call as the amount of bandwidth that is “necessary” or “required” to handle the call. See, e.g., id. at col. 1, ll. 43–57 (“an amount of bandwidth necessary to handle the new call”), col. 6, ll. 61–64 (“the additional bandwidth required (of the new call)”), col. 8, ll. 36–40 (“the bandwidth necessary for the new call”), col. 9, ll. 16–21 (“the anticipated additional bandwidth necessary for the new call”), 54–56 (“the bandwidth amount the new call will utilize (if connected)”), col. 10, ll. 21–23 (same), 41–43 (same), col. 12, ll. 1–2 (“an amount of bandwidth necessary to handle the new call”). It is that value—determined prior to the addition and comparison to the sliding maximum interzone bandwidth—that will be used for the new call if it is allowed to “proceed[].” Id. at col. 6, ll. 64–67 (if the sum is less than the sliding maximum interzone bandwidth, the call “proceeds” and “the QoS table is updated with the additional bandwidth used by that call”). Erskine does not describe the transmission bandwidth for the new call as being based on any parameter values for a past network connection, but rather as “whatever bandwidth the system determined is necessary for the additional call.” See Prelim. Resp. 8–9. In other words, the transmission bandwidth needed for a new call is predetermined and independent of whatever the sliding maximum interzone bandwidth is currently. See id.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,944,634 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - Apple Inc. v. DH International Ltd.Institution deniedPTAB · Jun 25, 2025 · IPR2025-00173 · APJ Brian P Murphy · IPR · Institution
Institution was denied for claims 1–13 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’333 patent. Accordingly, we do not institute an inter partes review of claims 1–13 of the ’333 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’333 patent and the prior art of record.” slip op. at 10
- BurdenNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The Petition does assert an obviousness theory within the analysis of the “control device” limitation [1(b)]. Pet. 25–35 (citing Ex. 1003 ¶¶ 85– 109). The Petition asserts that a “POSITA would have been motivated to implement McGregor’s device pursuant to Palmer such that the security code would be automatically transmitted when the device detects the receive the security code.” Pet. 28; see also id. at 31 (“A POSITA would have been motivated to implement Palmer’s (1) RF field detection and handshake processes and (2) Palmer’s transceiver hardware in McGregor’s device.”) (citing Ex. 1003 ¶¶ 95–105). We find the Petition’s obviousness theory to be inherently inconsistent and non-specific with regard to the “data conveyance switching element” recited in limitation [1(e)].” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,628,333 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–21 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’342 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that fields are mapped “to one another using normalized variables stored in a normalized variable data database” as required by claim 1.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a POSITA “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner present claim construction in the Petition or Preliminary Response. Pet. 9; see generally Prelim. Resp. Nonetheless, Petitioner contends that Patent Owner’s construction of “universal variable map” is too narrow, but does not appear to offer an alternative construction other than to state that a “universal variable map” includes “a database that links variables from different websites to each other.” See Reply 1-2 (emphasis omitted) (“PO’s arguments for why Halevy’s ‘form database’ is not a universal variable map are all premised on improperly narrowing the term’s scope by adding restrictions that are unsupported by the intrinsic record.”). In the Sur-Reply, Patent Owner reiterates that it has not proposed a construction for “universal variable map.” Sur-Reply 1 (“Patent Owner did not present any claim construction arguments regarding that term, nor does that term’s construction have any bearing on the arguments set forth in the POPR for denying the Petition.”). Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01272 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 14
- Skill levelSkill level board ownOther
“In determining the level of ordinary skill in the art, various factors may be considered, 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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“While [Dr. Fox] asserts that Oldham’s external engine is the required “networked data source,” he does not identify any teaching in Oldham that there are any “field identifiers” in Oldham’s external engine. Dr. Fox then goes on to argue that “POSAs would have recognized that the SO-properties mapped to the keywords are determined ‘field identifiers of the networked data source stored in the universal variable data database’ based on the dynamic data because the SO-properties for each class are defined by the form engine and mapped to corresponding fields from various forms stored in the form database.” EX1003, ¶ 102. First, Halevy’s SO-properties obviously cannot be “field identifiers” of Oldham’s external engine, because Halevy’s SO-properties do not come from Oldham’s external engine. Rather, they are generated in Halevy’s system as part of the “database schema” of Halevy’s form database. See EX1006, [0038] (“In one embodiment of the present invention, the database describes web sources in terms of an ontology of classes and properties, which is referred to as the ‘search ontology’ (SO).”). In addition, Halevy’s SO-properties are not “field identifiers” at all. Rather, the SO-properties are simply search filters that assist Halevy’s search engine in determining a form’s degree of relevancy to the user’s keyword search query. See EX1006, [0137] (“[T]he system performs a lookup based on the structured query in the form database to identify forms of interest (step 608) and ranks these forms (step 610).”). Also I note that Dr. Fox argues elsewhere in his declaration that SO-properties are “normalized variables,” which even he recognizes are different from “field identifiers.” See, e.g., EX1003, ¶ 101 (“Halevy’s form engine determines field identifiers . . . by mapping keywords in the query to SO-properties (i.e., normalized variables) . . . .”). As described in the ’734 patent, “normalized variables” are used to create associations between field identifiers of different forms, but they are not themselves “field identifiers.” See EX1001, 15:65-16:3 (“In this way, once a site’s category is defined, the variable mapping exercise can be simplified to match which variables or identifiers match up with which normalized variable . . . .”). Thus, Dr. Fox fails to show any teaching or suggestion in the combination of Oldham and Halevy of the claim limitation “determining . . . field identifiers of the networked data source stored in the universal variable data database.” Ex. 2001 ¶¶ 59, 61–64 (underlining added). We adopt Dr. Malek’s testimony and reasoning above as our own.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“b. Halevy’s schema-mapping search engine Although Halevy’s schema-mapping system uses a common set of SO-properties for the form fields in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping for “mapping,” linking, or integrating the field identifiers (parameter names) of different forms on different websites to one another to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 30
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,152,734 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01269 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“In determining the level of ordinary skill in the art, various factors may be considered, 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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- BurdenNot shown unpatentable
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. For the reasons given below, we determine Petitioner has not established that Belanger and Halevy disclose, teach, suggest or otherwise render obvious independent claim 1 of the ’626 patent. We begin with a discussion of Belanger and Halevy. slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although Halevy’s schema-mapping technique maps each form field to a common set of SO-properties in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping to “link” or integrate form fields (parameter names) of different forms on different websites to each other to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,789,626
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.