- Niantic, Inc. v. Nant Holdings IP, LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01133 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 5–11, 15, 18, 22–29, 34–36, 38, or 43 obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1, 5–11, 15, 18, 22–29, 34–36, 38, and 43 of the ’051 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’051 patent.” slip op. at 2
- BurdenDenied
“While the ’051 Patent does not expressly define [“virtual element attribute”], it describes “[e]lement attributes, AR object attributes, or other attributes” as “includ[ing] myriad types of attributes” such as “location information (e.g., relative location to elements 390 of a scene, triangulation, GPS coordinates, etc.)[.]” (’051, 16:4-19.) As explained above, Yu discloses that the AR platform system obtains digital data including ambient-light information in a three-step process at steps 901-903. (Yu, ¶¶0060-0062.) A POSA would have understood that this ambient light information is a “virtual element attribute” as described in the ’051 Patent, because the indoor/outdoor data, position data for the sun, and local weather data all relate to the location of the mobile device on which the virtual element will be placed. (Zyda, ¶¶140-141.) Pet. 29–30. Petitioner’s declarant makes these same statements. See Ex. 1002 ¶¶ 140–141.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“proceeding. On the one hand, Petitioner acknowledges “[t]he parties dispute the construction of several claim terms,” and submits that it identifies such disputes in the Petition “so that the Board can be aware of them.” Pet. 10– 11. Petitioner also “respectfully submits that [such disputes] need not be expressly resolved by the Board for purposes of evaluating Petitioner’s proposed Grounds” because “the prior art would satisfy the constructions proposed by either party.” Pet. 11. But, notwithstanding 37 C.F.R. § 42.104(b)(3), Petitioner does not provide and support an express construction in the Petition for any limitation at issue in this proceeding. On the other hand, Patent Owner submits the limitation “alter[ed] presence” should be construed to mean “the degree of at least a relevant AR object’s visual presentation based on a spectrum.” Prelim. Resp. 9. Patent Owner otherwise submits, “[f]or all other terms, the plain and ordinary meaning of those terms is sufficient for the Board to analyze Petitioner’s grounds at this preliminary stage.” Id. at 10. Patent Owner also argues the Petition fails to provide required claim constructions or support therefor in violation of 37 C.F.R. § 42.104(b)(3). Id. at 13–16 (arguing Petitioner “leaves the Board and Patent Owner to guess at how the Petition has construed the claims in and what support allegedly exists for such constructions”). Regardless, as discussed below, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“with particularity, how or why a real-world attribute, namely, Yu’s ambient light information, allegedly teaches a virtual element attribute as recited in claim 1. Prelim. Resp. 21 (“[T]he Petition points only to digital data concerning real-world ‘ambient-light information’ as corresponding to the claimed ‘virtual element attribute.’”; “Yu gives no hint that virtual element attributes would play any role in an image’s rendering.”; “[Petitioner] assumes that real-world ambient light corresponds to the virtual element attribute used to ‘determine whether to alter presence of a relevant AR object.’”). Patent Owner argues “at no point does the Petition construe the term ‘virtual element attribute’ or explain how the real-world attributes of ambient light could be a ‘virtual element attribute,’” despite “the ’051 Patent specification repeatedly distinguish[ing] real-world elements and virtual elements as separate factors.” Id. at 21–22; see id. at 22 (“[The skilled artisan] would conclude that virtual elements are different from real-world elements and that virtual element attributes are the information about the virtual elements, not real-world elements.”). Patent Owner also argues Petitioner bases its premise that real-world “location” of a mobile device may be a “virtual element attribute” on a “misleading[] combin[ation]” of two partial statements in the ’051 patent. Prelim. Resp. 22–23 (referring to Petitioner’s citation to Ex. 1001, 16:4–19). Patent Owner argues, “[i]n context, these two sentences do not define ‘virtual element attribute’ to mean location information as the Petition argues,” and “would [not] lead [the skilled artisan] to conclude that real-world ambient light is a virtual element attribute merely because it ‘relate[s] to the location of the mobile device.’” Id. at 23. As noted by Patent Owner (Prelim Resp. 23), contrary to Petitioner’s above argument, the ’051 patent explicitly discloses that “the location information can pertain to or reflect the physical location of real-world elements.” Ex. 1001, 16:15–16. Patent Owner concludes, and we agree for the reasons discussed above, Petitioner “simply has not shown that it is proper to rely on the real-world quality of ambient light to fulfill the requirement for a ‘virtual element attribute’ in claims 1 and 43 of the ’051 Patent.” Prelim. Resp. 23. Indeed, neither Petitioner nor its declarant expressly construes, with citation to supporting evidence, the limitation “virtual element attribute” to include real-world attributes, or provides evidentiary support and explanation of sufficient particularity for how or why obtaining a real-world attribute like ambient light information teaches obtaining a virtual element attribute. See 35 U.S.C. § 312(a)(3); 37 C.F.R § 42.104(b)(4). For the foregoing reasons, and constrained by the Petition, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that Yu discloses the “virtual element attribute” limitation, as recited in independent claims 1 and 43.” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,403,051 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Nov 26, 2021 · IPR2021-00915 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 2, 5–7, 9, 10, and 13–15 were obvious over either asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review of claims 1, 2, 5–7, 9, 10, 13–15 of U.S. Patent No. 9,948,662 B2 (Ex. 1001, “the ’662 patent”). Paper 2 (“Pet.”). Patent Owner, Fortinet, Inc., filed a Preliminary Response. Paper 10 (“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which authorizes institution of an inter partes review 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,” we do not institute an inter partes review of any of the challenged claims of the ’662 patent on the grounds asserted in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Claim 1 explicitly requires that the step of “selectively disabling . . . application of a subset of security features” be performed “by the network security device.” Petitioner, however, fails to sufficiently show that Ramsey’s firewall, the asserted “network security required by claim element 1[c]. Although Petitioner does cite to steps that are performed by Ramsey’s firewall, Petitioner does not sufficiently show that these steps perform the “selectively disabling” required by claim element 1[c]. For example, Petitioner asserts that Ramsey’s step 510 involves comparing characteristics of packet headers for those packets that may be considered trusted by firewall 225, that if the packet is trusted that it can be permitted to immediately pass through firewall 225, and that the packet is transmitted at step 5205. Pet. 19–20. Petitioner, however, does not sufficiently explain how any of these steps disable any security features. Rather, Petitioner asserts that “[s]topping IDS processing disables certain security features by ending the IDS without performing those steps for a particular transmission.” Pet. 20. Significantly, however, the steps that Petitioner identifies as stopping IDS processing all occur in the IDS, not in Ramsey’s firewall, the asserted network security device. Notably, Petitioner asserts that, as shown in the right side of Figure 5, “the IDS evaluates the firewall’s assessment in step 552 and immediately goes to ‘END’ if the packet is trusted (highlighted in blue . . . ).” Id. (emphasis added). Petitioner goes on to state that Ramsey’s “IDS 255 can determine” whether Ramsey’s firewall 225 has deemed a particular packet to be trusted and that if IDS 225 detects any of these firewall verdicts, then “then processing by the IDS stops.” Id. (citing Ex. 1003, 12:30–42; Ex 1002 ¶¶ 90–92). Thus, 5 Petitioner also relies on the same steps as satisfying the “determining . . . whether a network parameter . . . is associated with a set of trusted networks” required by claim element 1[b]. See Pet. 17–20.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require express construction in order to determine whether Petitioner has met its burden to demonstrate a reasonable likelihood that any of the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the ’662 patent, the types of problems and solutions described in the ’662 patent and cited prior art, we adopt and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a computer scientist with 25 years of experience and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art.” slip op. at 6
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,948,662 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Nov 24, 2021 · IPR2021-00913 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Forescout did not show that Palmer teaches real-time changes to the RAD’s running configuration, as required by claim 11d.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Cole’s testimony, Forescout argues that a person of ordinary skill in the art would have “a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cyber security,” or alternatively, “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 9–10 (citing Ex. 1003 ¶¶ 26–28). Forescout also argues that a person of ordinary skill in the art could be “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience.” Id. at 10 (citing Ex. 1003 ¶¶ 26–28). In its Preliminary Response, Fortinet does not dispute Forescout’s articulation of the level of ordinary skill in the art. Prelim. Resp. 12. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’299 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties do not, at this stage, argue opposing meanings for any of the claim terms that would be material to our analysis below, we do not need to construe any terms explicitly for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless, the ’299 patent specification, its prosecution history, and arguments made in the parallel district court proceeding inform our interpretation of a key aspect of limitation 11d, and we discuss that interpretation as part of our analysis below.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Thus, we agree with Fortinet that Forescout’s analysis fails to show that Palmer discloses or teaches the part of limitation 11d requiring that policy enforcement includes making real-time changes to the RAD’s running configuration. Because of this shortcoming, we determine that Forescout is not reasonably likely to prevail in showing that claim 11 is unpatentable as obvious over Palmer.” slip op. at 17
- BurdenDecided for patent owner
“Thus, we agree with Fortinet that Forescout’s analysis fails to show that Palmer discloses or teaches the part of limitation 11d requiring that policy enforcement includes making real-time changes to the RAD’s running configuration. Because of this shortcoming, we determine that Forescout is not reasonably likely to prevail in showing that claim 11 is unpatentable as obvious over Palmer.” slip op. at 17
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,369,299 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Nov 24, 2021 · IPR2021-00912 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Forescout did not show a reasonable likelihood that any challenged claim was unpatentable over Palmer or Palmer and Gilde.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review 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 also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Cole’s testimony, Forescout argues that a person of ordinary skill in the art would have “a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cyber security,” or alternatively, “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Pet. 8 (citing Ex. 1003 ¶¶ 26–28). Forescout also argues that a person of ordinary skill in the art could be “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience.” Id. (citing Ex. 1003 ¶¶ 26–28). In its Preliminary Response, Fortinet does not dispute Forescout’s articulation of the level of ordinary skill in the art. Prelim. Resp. 13. Because it is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’299 patent, we adopt it for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties do not, at this stage, argue opposing meanings for any of the claim terms that would be material to our analysis below, we do not need to construe any terms explicitly for our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless, the ’299 patent specification, its prosecution history, and arguments made in the parallel district court proceeding inform our interpretation of a key aspect of limitation 1d, and we discuss that interpretation as part of our analysis below.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree. It is clear from the plain language of limitation 1d that the claimed system makes real-time changes to the running configuration of the RAD, not the NACS. Fortinet argues that Forescout agreed with Fortinet on this point in the parallel district court litigation. See Prelim. Resp. 20 n.4. In its Identification of Preliminary Proposed Constructions in the district court litigation, Forescout proposed that the term “communicating with said RAD to make real-time changes to its running configuration” should be construed to mean “communicating with said RAD to make real time changes to the particular hardware and/or software arrangement of the RAD.” Ex. 1012, 48 (emphasis added) (citing Ex. 1001, 2:58–3:2, 3:26–47, 6:60–7:12, 7:42–48, 9:31–51, 10:13–29, 10:66–11:29, 12:1–22) ; see also Ex. 1011, 3 (Fortinet’s competing proposed construction in the parallel litigation, agreeing that what is changed is the configuration of the RAD). This interpretation that it is the RAD’s running configuration that changes is also consistent with the ’299 patent specification, including the passages that Forescout cited as evidence in the parallel district court litigation. For example, the ’299 patent discloses “restricting access to the network by the user device with a network access filter (NAF) configured on the RAD,” and “modifying the NAF based on compliance” while the RAD is running. Ex. 1001, 2:64–3:1; see also id. at 3:37–39 (“restricting access to the network by the user device with a network access filter (NAF) configured on the RAD”); id. at 9:65–67 (“[The Campus Manager] instructs the RAD to remove NAF from the client connection and it is granted access to the unrestricted network.”). It is also consistent with the applicant’s arguments during prosecution of the ’299 patent, where the applicant amended claim 1 to include limitation 1d. See Ex. 1002, 1242, 1246 (arguing that a prior art reference fails to teach limitation 1d because none of the reference’s “enforcement methods communicates back to the RAD to make changes to affect the security state of a client”). Thus, we agree with Fortinet that Forescout’s analysis fails to show that Palmer discloses or teaches the part of limitation 1d requiring that 8 We use the internal page numbering of the document, rather than the page numbers that Forescout added when it prepared the exhibit.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,369,299 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00782 · APJ Neil T Powell · IPR · Institution
The Board denied institution under § 314(a), finding no reasonable likelihood of prevailing on claims 1–18 and 20 and declining to reach claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) for the ʼ184 patent is a person with a Bachelor of Science degree in electrical engineering, computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field. Pet. 7 (citing Ex. 1002 ¶¶ 42–43). Petitioner elaborates that “more experience would compensate for less formal education, and vice versa.” Id. Patent Owner has not provided an assessment of the level of ordinary skill in the art. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Almeroth Declaration and is consistent with the ’184 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM INTERPRETATION The Petition explains that “Petitioner and its expert have applied the plain and ordinary meaning of all claim terms of the challenged claims.” Pet. 8. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions. We do not discern a need to construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“limitation 1[d] means Barry inherently discloses limitation 1[d], Petitioner also does not support that position. Establishing inherent disclosure of a limitation requires showing that the limitation necessarily results from the prior art disclosure. Continental Can Co. v. Monsanto Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities.”). Petitioner does not allege or demonstrate that a “unique identifier of a portable guest device” necessarily results from the disclosure of Soleimani’s paragraph 175, much less that such an identifier is necessarily associated with location and a timestamp. As noted above, the Petition states that “[i]dentifiers may be associated with location and timestamp.” (Pet. 26 (emphasis added)). Because Petitioner does not support its position that “Barry discloses” limitations 1[d] and 7[d] and does not argue that limitations 1[d] and limitation 7[d] would have been obvious, Petitioner does not demonstrate a reasonable likelihood of prevailing on Ground 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have combined the references’ teachings. Patent Owner first argues that Petitioner has not demonstrated a motivation to combine Berg with Soleimani. Prelim. Resp. 31–33. Patent Owner then argues that Petitioner has not demonstrated a motivation to modify Soleimani with the teachings of Brulé. Id. at 34. With respect to this issue, weighing the parties’ arguments, we see some merit in Petitioner’s arguments that a person of ordinary skill in the art would have been motivated to combine the teachings of Soleimani, Berg, and Brulé. We do not further address the merits of Petitioner’s challenge to claim 19. As explained below in Section III, given that Petitioner fails to show a reasonable likelihood of prevailing with respect to nearly all of the challenged claims, we exercise our discretion not to institute inter partes review.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,045,184 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 12, 2021 · IPR2021-00783 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 11 was unpatentable under any of the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’514 patent. Accordingly, we do not institute an inter partes review of claim 11. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) relating to the subject matter of the ʼ514 patent is a person with a Bachelor of Science degree in electrical engineering, computer science, or a related subject matter, plus at least two years of professional experience in the field of computer networks, wireless communications, or a similar field. Pet. 7 (citing Ex. 1012 ¶¶ 39–41). Petitioner elaborates that “more experience would compensate for less formal education, and vice versa.” Id. Patent Owner has not provided an assessment of the level of ordinary skill in the art. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is supported by the Almeroth Declaration and is consistent with the ’514 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. CLAIM INTERPRETATION The Petition explains that “Petitioner and its expert have applied the plain and ordinary meaning of all claim terms of the challenged claims.” Pet. 8. In its Preliminary Response, Patent Owner does not propose any explicit claim constructions. We do not discern a need to construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“These arguments fail because Soleimani does not suggest that the alternative embodiment reverses only the transmission of RF advertisement 220. Instead, Soleimani’s discussion of the alternative embodiment discloses reversing the devices’ roles compared to the examples of “FIGS. 2-10.” Ex. 1001, 17:60–18:7. Thus, in addition to reversing the device roles shown in Figure 2, Soleimani’s alternative embodiment reverses the roles shown in Figures 3–10. In the unreversed roles of Figures 2–10, RF communication unit 214 transmits RF advertisement 220 to wireless mobile device 230 (Figure 2), after which wireless mobile device 230 transmits message 236 to RF communication unit 214 (Figure 4). E.g., Ex. 1003, 6:19–21, 7:22–23, 12:53–58, Figs. 2, 4. Accordingly, in Soleimani’s alternative embodiment, wireless mobile device 230 transmits RF advertisement message 220 to RF communication unit 214, after which RF communication unit 214 transmits message 236 to wireless mobile device 230. In both the unreversed and reversed embodiments, RF communication unit 214 and wireless mobile device 230 swap RF advertisement message 220 and message 236, such that neither device sends both messages. Petitioner does not acknowledge this, much less provide a persuasive reason that a person of ordinary skill in the art would have deviated from these embodiments. Nor does Petitioner argue or show that there would have been a reasonable expectation of success for deviating from Soleimani’s message swapping. Failing to support its position that Soleimani discloses wireless mobile device 230 sending both RF advertisement message 220 with a public identifier and message 236 with a private identifier, Petitioner does not provide a persuasive basis for its argument that it would have been obvious to store both public and private identifiers in mobile device 230’s memory. Accordingly, Petitioner fails to demonstrate a reasonable likelihood of prevailing on Ground 1.” slip op. at 19
Claim construction§ 103 obviousnessPatents in suitUS 10,157,514 - Decurtis LLC v. Carnival CorporationInstitution deniedPTAB · Oct 8, 2021 · IPR2021-00784 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on obviousness for any challenged claim, 1–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 103(a) A claim is unpatentable under § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” slip op. at 6
- BurdenDenied
“computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“locking mechanism are separate and distinct components because claim limitation 13[b] sets forth a “door lock communication module” that is “electrically connected to the electronically controlled locking mechanism of the latch assembly.” Prelim. Resp. 17–18. We begin with the language of the claim. The listing of the door lock communication module and locking mechanism as separate and distinct elements clearly implies that they are distinct components. Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)). Furthermore, not only are the communication module and locking mechanism recited as separate elements, the phrase “electrically connected to each other” denotes a further level of distinction between those two components. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (finding the word “other” to “denote[] a further level of distinction” between separately recited components); see also Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., 838 F. App’x 551, 553 (Fed.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“computers were “separate and distinct”). Accordingly, Petitioner must show that the combination of Soleimani and Elfström applied to claim 13 teaches or suggest a door lock communication module and an electronically controlled locking mechanism that are distinct, separate, and electrically connected to each other. Soleimani does not teach or suggest a locking mechanism and communication module that are separate, distinct, and electrically connected to each other We are persuaded by Patent Owner’s argument that Petitioner has not shown Soleimani to teach or suggest both an “electronically controlled locking mechanism” and a “door lock communication module” electrically connected thereto in the claimed configuration. Prelim. Resp. 16–17. Although Petitioner identifies the claimed locking mechanism as Soleimani’s “electronically actuated lock 216,” and the claimed door lock communication module as Soleimani’s “networked lock actuator” (Pet. 19), we are not persuaded that these elements of Soleimani teach locking mechanism and communication module that are electrically connected to each other as claimed. Petitioner points to electronically actuated lock 216 as the electronically controlled locking mechanism and to a networked lock actuator as the communication module. Pet. 17. Petitioner does not clearly specify whether the electronically controlled locking mechanism is alleged to be the entire electronically actuated lock 216 or merely the physical catch portion therein. We consider both possibilities. Should Petitioner’s contention be that the physical catch is the claimed “electronically controlled locking mechanism,” Petitioner does not allege that the catch is “electrically connected to” the door lock communication module as recited in claim limitation 13[b]. Rather, Petitioner only characterizes Soleimani’s catch as being “actuated” by the network lock actuator (Petitioner’s alleged “door lock communication module”). Pet. 61–62 (addressing claim 1). We note the Petition includes evidence that this action need not involve an electrical connection to the latch. In Petitioner’s discussion of Bliding (not applied to claim 13), Petitioner’s declarant discusses an example of a mechanical, not electrical, connection between catch and actuator. Ex. 1002 ¶ 71 (“an electric motor to actuate a catch”) (citing Ex. 1009 ¶ 21, in which “rotation of the rotatable axle . . . actuates the lock catch”). Thus, to the extent Petitioner attempts to allege the catch portion of lock 216 teaches or suggests the electronically controlled locking mechanism electrically connected to the door lock communication module, Petitioner has not explained how Soleimani’s catch is “electrically connected” in any manner, much less to the door lock communication module as claimed. Thus, a reliance solely on Soleimani’s catch as the electronically controlled locking mechanism would fail to teach the “electrically connected” limitation, and as such, would lack a reasonable likelihood of prevailing on the merits of the obviousness ground for claim 13.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,049,516 - Microsoft Corporation v. Uniloc 2017 LLCInstitution deniedPTAB · May 6, 2020 · IPR2020-00101 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Microsoft did not show a reasonable likelihood that claims 1–15 were obvious over Olkin and Kim, particularly as to the required confirmation step.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony of Dr. Houh, Microsoft argues that a person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical and/or computer engineering, or equivalent training, and two years of experience in computer networking and information security.” Pet. 9 (citing Ex. 1008 ¶ 43 (Dr. Houh’s testimony to that effect)). For the purpose of its Preliminary Response, Uniloc does not dispute Microsoft’s assertion. See Prelim. Resp. 10–11. We find that Microsoft’s proposed level of ordinary skill is consistent with the teachings of the ’359 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself may provide evidence as to the appropriate level of ordinary skill). Therefore, we adopt Microsoft’s uncontested formulation as the level of ordinary skill for this decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Microsoft contends that the claims of the ’359 patent “do not require proposed constructions that differ from the claim language in order for the Board to compare the prior art to the claims.” Pet. 9. Likewise, Uniloc “contends that no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Prelim. Resp. 10. In light of the parties’ arguments and evidence, we agree with the parties that it is unnecessary to expressly construe any claim terms for our determination of whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Nevertheless, our interpretation of the ’359 patent claims is informed by the disclosure and prosecution history, and we will discuss our interpretation of pertinent claim terms in the context of our analysis in the section below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Finally, Microsoft has not sufficiently explained why a person of ordinary skill in the art would have modified Olkin’s system by adding an independent verification step. Olkin uses “conversation keys,” which are associated with a flow of messages “from a single source to one or more destinations.” Ex. 1003, 21:48–50. In Olkin’s system, the originator sends the messages to members of a recipient list, but the intended recipients on that list need not be authenticated before, or even after, the originator sends the message. See Ex. 1003, 9:55–60 (an intended recipient need not be registered with the system when the originator requests the key); id. at 10:3– 7 (alternatively, the security server “need not be concerned with whether the receivers . . are registered”). Microsoft has not adequately explained why, in Olkin’s system, where messages may be broadcast to multiple recipients before those recipients are even registered, a person of ordinary skill in the art would have had reason to independently verify to the recipients that the originator asked for, and was sent, an encryption key. For the above reasons, we determine that Microsoft has not adequately shown that Olkin teaches or suggests limitation 1.6 of claim 1. Microsoft does not point to any passage in Kim that would supply the missing teaching. See Pet. 26–29. Nor do Microsoft’s arguments regarding limitations 1.1–1.5 demonstrate that the combination of Olkin and Kim teaches limitation 1.6. See id. at 11–26. Thus, we determine that Microsoft has not demonstrated a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Olkin in combination with Kim.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,495,359 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01687 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving institution denied for claims 1–6 because the proposed obviousness combinations relied on hindsight and lacked sufficient support.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“the proposed combination of Hansen and Ramasubramanian manifests hindsight reasoning, as it would abandon the receiver-based channel estimation techniques central to Ramasubramanian in favor of an incompatible transmitter-based threshold control system that mirrors the disclosures of the challenged patent, but is neither suggested by the prior art, nor supported by the background knowledge possessed by a person having ordinary skill in the art. Id. at 18–19; see also id. at 27–28 (explaining that the same reasoning applies to the combination of Mujtaba and Ramasubramanian). More particularly, the Decision finds that Petitioner discounts the core disclosures of Ramasubramanian, and argues instead that an ordinarily skilled artisan would have been motivated, based on the problem identified by Ramasubramanian, to pursue an undisclosed solution wholly incompatible with the solution Ramasubramanian proposes. In view of Ramasubramanian’s teachings concerning the advantages of the disclosed receiver-based channel estimation system and method, and Hansen’s silence regarding smoothing, we are not persuaded by Petitioner’s argument.” slip op. at 4
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony 5 of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 17–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377 - Intel Corporation v. Hera Wireless S.A.Rehearing deniedPTAB · Nov 8, 2019 · IPR2018-01686 · APJ Jacqueline T Harlow · IPR · Rehearing
The Board denied Intel’s rehearing request, leaving in place the denial of institution on claims 1–6 because the obviousness combinations relied on hindsight and did not show a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“ANALYSIS Pursuant to 37 C.F.R. § 42.71(d): 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. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“contention, rather than ignoring or misapprehending the obviousness standard set forth in KSR, the Decision discusses KSR throughout as a basis for our determination that Petitioner had failed to demonstrate a reasonable likelihood of prevailing on its obviousness challenge. See, e.g., Dec. 11, 24, 25, 28. Indeed, the Decision properly applies KSR, including its instruction that the factfinder should be mindful “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning,” KSR, 550 U.S. at 421, in finding that the Petition relies improperly on hindsight in its obviousness arguments. Dec. 24–25, 28. Petitioner’s argument that KSR was “overlooked” is merely an attempt to reargue its case, which is not a proper ground for rehearing.” slip op. at 3
- Expert testimonyPetitioner expert discountedDecided for patent owner
“instances,” we improperly “adopted Dr. Sharony’s factual position despite conflicting testimony from Dr. Wicker” (Req. Reh’g. 9). In deciding whether to institute, we are required by our rules to view testimonial evidence “in the light most favorable to the petitioner” only where there is a genuine issue of material fact created by the testimony. See 37 C.F.R. § 42.108 (c). The rule, however, does not require us to accept the testimony of any expert. The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 5 2010). Aside from identifying the evidence relied upon by the parties, and describing their positions regarding the level of ordinary skill in the art, our Decision does not refer to Drs. Wicker or Sharony or discuss, much less rely on, their testimony. See Dec. 7–9. Our determination that Petitioner failed to carry its burden to demonstrate a reasonable likelihood of establishing the unpatentability of at least one claim of the ’377 patent is premised on the inadequacy of Petitioner’s showing, and our finding that Petitioner’s proposed obviousness combinations reflect improper hindsight bias. See Dec. 18–28. Moreover, acceptance of Petitioner’s contention that the Board must automatically adopt the reasoning of a petitioner’s expert in deciding whether to institute inter partes review––irrespective of the sufficiency of that testimony––would compel institution in every case where expert testimony is presented. Petitioner’s argument is another instance of a disagreement with our Decision and not a proper basis for rehearing.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 8,737,377
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.