- HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCRehearing deniedPTAB · Feb 17, 2016 · IPR2015-01501 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing, leaving institution denied for claims 7–10 and 12 because Petitioner did not show the Board overlooked or misapprehended its arguments or evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION 1. Standard for Reconsideration 37 C.F.R. § 42.71(d) provides that [a] party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. (Emphasis added.) When reconsidering a Decision on Institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). A request for rehearing, however, is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Pet. 15–16 (Section IX.A.1.d.); see also id. at 29 (“Based on information cited above for claim elements 1[c] and claim 2, see supra Sections IX.A.1.d, IX.A.2 . . .”). In order to show that there is a reason to combine the teachings of Gulick and the MPEG standard, it is not enough to show that Gulick and the MPEG standard were available at the effective filing date of the ’753 patent. As we explained, we found this argument to be conclusory and inadequately supported. Dec. 19–20. Second, Petitioner argues that we overlooked that Gulick teaches the use of one or more digital signal processors (“DSPs”) in multimedia engine 112 (Reh’g Req. 9–12 (citing Pet. 13, 14, 30); see Ex. 1017, col. 4, ll. 16–18, col. 5, ll. 15–18, col. 7, ll. 37–42, Figs. 2, 3, 5) and that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing” (Reh’g Req. 12 (citing Pet. 16); see Ex. 1017, col. 5, ll. 15–21; Ex. 1007, col. 1, ll. 62–67, Fig. 5). Essentially, Petitioner argues that because embodiments of Gulick employ DSPs (Reh’g Req. 11; Dec. 14–15 (reproducing Ex. 1017, Fig. 2)) and because the MPEG standard may be implemented on dedicated DSPs (Reh’g Req. 13 (quoting Ex. 1007, col. 6, ll. 56–57)), the common use of DSPs would have been a reason to combine the teachings of these references.4 We did not overlook this argument; instead, we found the argument and supporting evidence insufficient to demonstrate a reason to combine the teachings of Gulick and the MPEG standard to achieve the subject matter recited in claim 7. Dec. 20. As noted above, a request for rehearing is not an opportunity merely to disagree with our assessment of the arguments or weighing of the evidence. See supra Section II.1.” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 7,777,753 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01494 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted § 103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1–4, 8– 12, 14, 15, 19, and 20 (“the challenged claims”) of U.S. Patent No. 8,054,315 B2 (Ex. 1001, “the ’315 patent”). Paper 2 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’315 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Apart from the claims, the ’315 patent does not use the term “image decoder circuit.” The ’315 patent’s definition of “decoder” to mean “a video and/or audio decompression device,” and its disclosure that the “decoder/encoder” can be any conventional decoder complying with any conventional standard support a construction of “decoder” that encompasses both hardware and software, but those portions of the Specification do not use the word “circuit,” as the claim term recites. Elsewhere, the Specification uses “circuit” to describe hardware. See, e.g., Ex. 1001, 2:26 (referring to video decoding circuit 12), 3:2 (referring to interface circuit 146), 6:45–51 (referring to decoder/encoder 80 as either a device or a cell in an integrated circuit), 6:52 (referring to video decoding circuit 12), 14:60–62 (“Thus, decoding in a computer can be performed according to the invention by means of a low-cost (due to the small number of pins) single integrated circuit . . . .”). Based on our review, the ’315 patent does not use the word “circuit” to refer to software executing on hardware. The dependent claims, however, suggest that the “circuits” recited in claim 1 are not limited to physical hardware. Dependent claim 4, for example, recites “wherein the audio circuit includes a software audio decoding component” (id. at 16:17– 18 (emphasis added)), which suggests that the “audio circuit” recited in claim 1 is broad enough to encompass software. See also id. at 6:57–62 (“The audio decoding can be performed by a separate audio coder-decoder (codec) coupled to the first device 42, or through software. In the preferred embodiment of the invention, when the decoder/encoder 80 is in a system containing a processor and is coupled to the processor, the audio decoding is performed in software.” (emphasis added)). Similarly, dependent claim 8 recites “wherein the first, second, and third onboard memories are configured in the same onboard storage space,” which suggests that the “first onboard memory,” “second onboard memory,” and “third onboard memory” recited as components of the “image decoder circuit” in claim 1 are logical memories rather than distinct, physical memories. Accordingly, on this record, and for purposes of this Decision, we adopt Petitioner’s proposed construction of “image decoder circuit.”” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“On this record, Petitioner does not explain adequately how Gulick would have been modified. It is not clear from the Petition, for example, whether Petitioner is arguing that a person of ordinary skill in the art would have modified Gulick to perform the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine 112, or by adding known decoder hardware to the one or more DSPs of Gulick’s multimedia engine 112. Dr. Stone’s testimony is equally insufficient. In paragraph 99, for example, Dr. Stone testifies that “it was well known in the art at the time of the alleged invention to employ a DSP for MPEG video processing.” Ex. 1030 ¶ 99 (citing Ex. 1007; Ex. 1023). Although Exhibit 1007 refers to its “MPEG accelerator circuit” as “a dedicated digital signal processor for video decompression” (6:56–57), it describes the video decompression engine as “hardwired (circuitry)” (7:2). Exhibit 1023, in contrast, suggests the use of software. Ex. 1023, 6:20–24 (“DSP engine 206 which is programmable to perform various functions such as MPEG decoding” (emphasis added)). To the extent Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by writing software to execute on the one or more DSPs of Gulick’s multimedia engine, we are not persuaded that such a modification would have been obvious. Gulick does not teach that multimedia engine 112 decompresses or decodes video. Although Gulick describes the multimedia engine as performing “video and audio processing functions” (see, e.g., Ex. 1017, 5:18), the examples described—“polygon rendering and texture mapping” (id. at 5:26)—relate to graphics processing rather than to video decoding or decompression. In addition, Gulick describes multimedia engine 112 as including “video processing circuitry and/or firmware” that converts video data into analog signals for output directly to video monitor 114 or for outputting digital video pixel data (id. at 5:37–61), which further suggests that the “video” functions performed by multimedia engine 112 relate to processing graphics data for output rather than to decoding or decompressing video. Neither Petitioner nor its expert explains in sufficient detail why or how a person of ordinary skill in the art would have programmed a DSP intended for graphics processing to perform the functions required for video decoding or decompression. To the extent that Petitioner is arguing that a person of ordinary skill in the art would have implemented the functions described in MPEG by adding known decoder hardware to Gulick’s multimedia engine 112, we are not persuaded that doing so would have constituted a combination of familiar elements according to known methods to yield predictable results. Petitioner also does not explain how known decoder hardware would be added to the digital signal processor of Gulick, or why a person of ordinary skill in the art would have been motivated to do so. Although Exhibit 1007 refers to its MPEG accelerator chip as a “dedicated digital signal processor,” we are not persuaded on that basis alone that the addition of dedicated video decoding hardware to any digital signal processor would have constituted a combination of familiar elements according to known methods to yield predictable results.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared memory.” Petitioner identifies Gulick’s multimedia memory 160 and argues that it is “shared” because Gulick teaches that “arbiter block 161 performs arbitration between the CPU 102 and the multimedia engine 112 for the multimedia memory.” Pet. 22– 23 (quoting Ex. 1017, 4:41–43). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared.” The ’315 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’315 patent. Gulick describes CPU 102 as using primarily main memory 110: Referring again to FIG. 1, in the preferred embodiment, the main memory 110 stores the operating system and applications software as well as driver software, including video drivers and audio drivers. The CPU 102 executes applications software and driver software from the main memory 110 and writes any associated video and audio data to the main memory 110. The CPU 102 then provides high level instructions directly to the multimedia memory 160 and/or to the DMA engine 164, or to the multimedia engine 112. Ex. 1017, 6:13–22. Gulick describes CPU 102 using multimedia memory 160 only in exceptional circumstances, such as when main memory 110 is full: Thus the multimedia memory 160 is available to store non-multimedia data as needed. In other words, if the main memory 110 becomes full and additional memory is needed, the CPU 102 can store code and data in the multimedia memory 160. Thus, the multimedia memory 160 is used for real-time or multimedia data and is also used by the CPU 102 as overflow memory space. Id. at 4:34–40; see also id. at 8:2–3 (“Thus the multimedia memory 160 is available to store non-multimedia data as needed.”). Because multimedia memory 160 exists in addition to main memory 110 and because CPU 102 uses main memory 160 only in exceptional circumstances, we are not persuaded that multimedia memory 160 is the “shared memory” of claim 1. Moreover, to the extent Petitioner is arguing that Gulick’s main” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,054,315 - HTC Corporation / HTC America, Inc. et al. v. Parthenon Unified Memory Architecture LLCInstitution deniedPTAB · Jan 6, 2016 · IPR2015-01503 · APJ Matthew R Clements · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 6–12, or 17 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Electronics Co., Ltd.; and Samsung Electronics America, Inc. (collectively “Petitioner”) filed a Petition requesting inter partes review of claims 1, 6– 12, and 17 (“the challenged claims”) of U.S. Patent No. 8,681,164 B2 (Ex. 1001, “the ’164 patent”). Paper 1 (“Pet.”). Parthenon Unified Memory Architecture LLC (“Patent Owner”) did not file a Preliminary Response. We review the Petition pursuant to 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the accompanying evidence, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims of the ’164 patent. Accordingly, pursuant to 35 U.S.C. § 314, we deny institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner proposes to construe the term to mean “hardware and/or software that translates data streams into video or audio information and vice versa.”2 Pet. 9–10 (citing Ex. 1001, 2:1–6 (“Video and/or audio compression devices (hereinafter ‘encoders’)” and “a video and/or audio decompression device (hereinafter ‘decoder’)”), 6:62–7:5, 15:38–41 (“[a]ny conventional decoder including a decoder complying to the MPEG-1, MPEG-2, H.261, or H.261 standards, or any combination of them, or any other conventional standard can be used as the decoder/encoder.”), 16:63–64, and 17:9–13). Petitioner further relies upon a dictionary definition for “decoder” as evidence of the term’s ordinary and customary meaning to a person of ordinary skill in the art as of the effective filing date of the ’164 patent, in the context of the entire patent including the Specification. Id. at 10 (citing Ex. 1014, 56 (“decoder (n). Any hardware or software system that translates data streams” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner offers no other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For purposes of this Decision, no other claim terms require express construction.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Independent claim 1 recites “a shared main memory.” Petitioner identifies Gulick’s main memory 110 and multimedia memory 160 and argues that multimedia memory 160 is “shared” because Gulick teaches that DMA engine 164 “performs transfers between the main memory 110 and the multimedia memory 160.” Pet. 14–15 (quoting Ex. 1017, 4:44–46). We are not persuaded, however, that Gulick’s multimedia memory 160 is “shared” main memory. The ’164 patent describes decoder/encoder 80 and a first device using a single memory. See, e.g., Ex. 1001, Figs. 2–4. Gulick, in contrast, describes main memory 110 in addition to multimedia memory 160. The system described in Gulick does not, therefore, realize the advantage of sharing a single memory described by the ’164 patent. Gulick describes CPU 102 as using primarily main memory 110:” slip op. at 12
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,681,164 - Sophos Ltd. / Sophos, Inc. v. Fortinet, Inc.Rehearing deniedPTAB · Oct 26, 2015 · IPR2015-00910 · APJ Michael R Zecher · IPR · Rehearing
The Board denied Sophos’ rehearing request, leaving institution denied for grounds based in whole or in part on Taylor because the petition did not sufficiently show Taylor taught the claimed processing, reconstructing, and scanning steps.
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 we misapprehended or overlooked, and the place where each matter was addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). With this in mind, we address the arguments presented by Sophos in turn.” slip op. at 3
- BurdenNot shown unpatentable
“Taylor’s proxy 211 applies filtering rules, we still would not be persuaded that Taylor properly accounts for the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. In its Request for Rehearing, Sophos directs us to disparate disclosures in Taylor, and then generally asserts that Taylor accounts for all the features recited in the “processing” step. For instance, Sophos cites to and relies upon the following disclosures in Taylor: (1) one embodiment of the firewall, as illustrated in Figure 3 of Taylor, see, e.g., Ex. 1006, 6:22–25, 6:58–60; and (2) the transparency procedure, as illustrated in Figure 6 of Taylor, see, e.g., id. at 11:46–48. Neither Sophos, nor its expert witness, Dr. Pfleeger, provides a credible or sufficient explanation as to how one of ordinary skill in the art might combine these cited disclosures in Taylor to teach that proxy 211—not DPF 207—performs the claimed “processing” step. We, therefore, maintain our position that Sophos does not present sufficient evidence in its Petition to support a finding that Taylor describes the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. See Dec. 11–13.” slip op. at 5
- Strike new argumentNew argument disregardedOther
“its argument that Taylor’s proxy 211 applies filtering rules. In its Request for Rehearing, Sophos focuses on new disclosures in Taylor that purportedly explain how Taylor’s proxy 211 uses filtering rules to allow a connection. Compare Pet. 13 (citing Ex. 1006, Abstract, 2:60–63, 6:40–44, 11:46–48), with Req. Reh’g 4 (citing Ex. 1006, 6:22–25, 6:58–60, 11:46–48). To support this new argument, Sophos also directs us to new paragraphs in the Declaration of Dr. Pfleeger. Compare Pet. 13 (citing Ex. 1009 ¶ 88), with Req. Reh’g. 5 (citing Ex. 1009 ¶¶ 60, 88, 89). A request for rehearing is not an opportunity to present new arguments or evidence that could have been presented and developed in the Petition. Put simply, we could not have overlooked or misapprehended arguments or evidence not presented and developed by Sophos in the Petition.” slip op. at 4
- Expert testimonyPetitioner expert discountedOther
“Taylor’s proxy 211 applies filtering rules, we still would not be persuaded that Taylor properly accounts for the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. In its Request for Rehearing, Sophos directs us to disparate disclosures in Taylor, and then generally asserts that Taylor accounts for all the features recited in the “processing” step. For instance, Sophos cites to and relies upon the following disclosures in Taylor: (1) one embodiment of the firewall, as illustrated in Figure 3 of Taylor, see, e.g., Ex. 1006, 6:22–25, 6:58–60; and (2) the transparency procedure, as illustrated in Figure 6 of Taylor, see, e.g., id. at 11:46–48. Neither Sophos, nor its expert witness, Dr. Pfleeger, provides a credible or sufficient explanation as to how one of ordinary skill in the art might combine these cited disclosures in Taylor to teach that proxy 211—not DPF 207—performs the claimed “processing” step. We, therefore, maintain our position that Sophos does not present sufficient evidence in its Petition to support a finding that Taylor describes the “processing” step performed by a proxy module, as required by independent claims 1, 10, and 13. See Dec. 11–13.” slip op. at 5
NonePatents in suitUS 7,966,654 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 22, 2015 · IPR2015-01050 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the means-plus-function claims lacked sufficient structural disclosure and Feldmeier did not establish claim 63’s forwarding-permission limitation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’853 patent.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” (Ex. 1001, 5:21–25), or some other processor running IOS (Ex. 1001, 1:33–37). It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” (id. at 3:36–39). Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): “means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel”; “means for making a routing decision in response to said access result”; and “means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet.” Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues, “Feldmeier’s packet forwarding is not the same as determining forwarding permissions (e.g., whether a packet is restricted from being transmitted from a selected source device to a selected destination device.)” Prelim. Resp. 31–32. Patent Owner further argues Feldmeier does not process a packet based on a forwarding permission. Id. We agree. Petitioner purports to show that “matching one or more characteristics of said packet with one or more access control specifiers,” recited in claim 63, results in “permission” to forward a packet. Petitioner states that “the information obtained from the CAM lookup governs the decision of whether to route or discard the packet.” Pet. 40 citing (Ex. 1003 ¶ 106). We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner (Pet. 40), “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Ex. 1005, 13:24– 27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translations according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input or output permission by, among other things, “determining all of the successful matches”). Based on the above passages, Petitioner has not shown evidence that an affirmative match in Feldmeier results in a permission of packet forwarding, as required by claim 63. For the reasons stated above, we determine Petitioner has not shown sufficiently that Feldmeier discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Feldmeier.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 7,023,853 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 22, 2015 · IPR2015-01049 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“(“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1, 2, 5, 7– 10, 12–16, 18–22, 25, and 28–31 of the ’577 patent and, therefore, deny the Petition for inter partes review..” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner, “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Id. at 13:24–27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translation[s] according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices. Ex. 1001, 1:4–10. Patent Owner also cites certain dictionary definitions. Id. at 10–11. Patent Owner states that “modifying” transmission is “nowhere in the record.” Id. Nonetheless, Patent Owner does not explain why the embodiment cited by the Petitioner above is not relevant to construing the claims. Because the embodiment cited by Petitioner suggests that access control may be used to change the destination address of a packet, we apply a broader definition than proposed by Patent Owner. We find the broadest reasonable construction of “access control” to include restrictions or modifications on the intended destination address to which a packet is to be transmitted.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 6,377,577 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution
The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other
“The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14
Claim construction§ 102 anticipationPatents in suitUS 7,023,853 - Arista Networks, Inc. v. Cisco Systems, Inc.Institution deniedPTAB · Oct 6, 2015 · IPR2015-00974 · APJ Matthew R Clements · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving unpatentability under the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent. Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Applying that standard, we interpret the claim terms according to their ordinary and customary meaning in the context of the patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for ten terms. Pet. 9–14. Patent Owner disputes some of those constructions and proposes an additional term for construction. Prelim. Resp. 9–19. For purposes of this Decision, we determine that we need not expressly construe any of the terms for which the parties have proposed constructions.” slip op. at 6
- Skill levelOther
“expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7. nothing in Habraken supports the determination that the network interface ports of all routers, such as the 3Com router described in Amara, are configurable by “internal applications” of that router. At best, Habraken establishes that a person of ordinary skill in the art at the time would have known that Cisco routers include a Setup dialog for configuring router interfaces. This is not sufficient, however, to persuade us that a person of ordinary skill in the art would have read Amara as necessarily disclosing that the network interface ports of the “device” are configurable by the internal applications.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Amara’s express disclosure is not sufficient. Amara’s disclosure that internal applications control or configure the device only “typically” suggests that they do not necessarily serve that purpose and, therefore, that another component of device 100 may serve that purpose. Moreover, Amara’s disclosure that internal applications control or configure the “device” is not sufficiently specific as to whether the interface ports are an aspect of the device being controlled or configured by the internal applications. Our reviewing court has held that a prior art reference that does not expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,224,668 - Sophos Ltd. / Sophos Inc. v. Fortinet, Inc.Institution deniedPTAB · Aug 24, 2015 · IPR2015-00912 · APJ Matthew R Clements · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review of claims 1, 2, 4, 6, 12, 17, 18–20, 24, 26, 28, 30, 31 and 341 (“the challenged claims”) of U.S. Patent No. 8,656,479 B2 (Ex. 1001, “the ’479 patent”). Paper 1 (“Pet.”). Fortinet, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims of the ’479 patent. Accordingly, we do not institute an inter partes review for any of the challenged claims.” slip op. at 2
- BurdenNot shown unpatentable
“We are persuaded by Patent Owner’s arguments. As Patent Owner correctly points out, Taylor describes DPF 207, not proxy 211, as applying the disclosed filtering rules. Ex. 1006, 6:58–60 (“Once proxy 211 determines whether to allow a new connection and which one of the rules to apply to the connection, that information is transferred to DPF 207.”), 3:63– 65 (“Subsequent packets received with the same attribute information are then automatically forwarded without consulting the proxy”). Because those rules are applied by DPF 207, not proxy 211, we are not persuaded that such filtering constitutes “processing, by the proxy module,” as recited in independent claim 1, and similarly recited in independent claims 17, and 26. With respect to Taylor’s processing of connection control packets and packets received on ports for which transparency is on, we agree with Patent Owner that, even assuming that proxy 211 processes those packets as described, such processing is performed only on a packet-by-packet basis and, therefore, does not teach “reassembling the application-level content from a plurality of packets of the packet stream,” as recited in independent claim 1, and similarly recited in independent claims 17 and 26. We are not persuaded by Petitioner’s argument that reassembling is inherent in Taylor. Petitioner argues that reassembling is inherent “in order to process and scan for ‘application level content” (Pet. 12–13), but the phrase “application level content” is not used by Taylor. Petitioner appears to be quoting claim language. Although Taylor uses the term “application layer” with respect to proxy 211, the term is used to describe where proxy 211 is executing (Ex. 1006, 4:58–60 (“Proxy 211 is located in the user space, i.e., the application layer, of firewall 201.”)), not to describe what type of content proxy 211 is filtering. Taylor’s description of “applying a proxy filter at the application layer to all packets received” (6:40–44) and of forwarding a packet “to proxy 211 to be filtered at the application layer” (11:46–48) is consistent with the use of “application layer” to refer to user-space, as opposed to kernel space, within the operating system of firewall 201. Because Taylor does not describe processing “application-level content,” we are not persuaded by Petitioner’s argument that reassembling and scanning are inherent in Taylor.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We are persuaded by Patent Owner’s arguments. As Patent Owner correctly points out, Taylor describes DPF 207, not proxy 211, as applying the disclosed filtering rules. Ex. 1006, 6:58–60 (“Once proxy 211 determines whether to allow a new connection and which one of the rules to apply to the connection, that information is transferred to DPF 207.”), 3:63– 65 (“Subsequent packets received with the same attribute information are then automatically forwarded without consulting the proxy”). Because those rules are applied by DPF 207, not proxy 211, we are not persuaded that such filtering constitutes “processing, by the proxy module,” as recited in independent claim 1, and similarly recited in independent claims 17, and 26. With respect to Taylor’s processing of connection control packets and packets received on ports for which transparency is on, we agree with Patent Owner that, even assuming that proxy 211 processes those packets as described, such processing is performed only on a packet-by-packet basis and, therefore, does not teach “reassembling the application-level content from a plurality of packets of the packet stream,” as recited in independent claim 1, and similarly recited in independent claims 17 and 26. We are not persuaded by Petitioner’s argument that reassembling is inherent in Taylor. Petitioner argues that reassembling is inherent “in order to process and scan for ‘application level content” (Pet. 12–13), but the phrase “application level content” is not used by Taylor. Petitioner appears to be quoting claim language. Although Taylor uses the term “application layer” with respect to proxy 211, the term is used to describe where proxy 211 is executing (Ex. 1006, 4:58–60 (“Proxy 211 is located in the user space, i.e., the application layer, of firewall 201.”)), not to describe what type of content proxy 211 is filtering. Taylor’s description of “applying a proxy filter at the application layer to all packets received” (6:40–44) and of forwarding a packet “to proxy 211 to be filtered at the application layer” (11:46–48) is consistent with the use of “application layer” to refer to user-space, as opposed to kernel space, within the operating system of firewall 201. Because Taylor does not describe processing “application-level content,” we are not persuaded by Petitioner’s argument that reassembling and scanning are inherent in Taylor.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner “accepts the use of ordinary and customary meanings of the claim terms” (Prelim. Resp. 7), but proposes constructions for the terms “content processing configuration settings” and “by.” Prelim. Resp. 8–9. For purposes of this decision, we need not construe either term. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
Claim construction§ 103 obviousnessPatents in suitUS 8,656,479
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.