• Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution denied
  PTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.

  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 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. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13

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

    “This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,181,743
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Oct 11, 2024 · IPR2024-00678 · APJ John A Hudalla · IPR · Institution

  Institution was denied for claims 1, 2, 5, and 6 because Petitioner did not show a reasonable likelihood that either Krantz alone or Krantz and Herrmann rendered them obvious.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

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

    “We are persuaded by Patent Owner’s arguments. As noted by Patent Owner (Prelim. Resp. 27), claim 1 separately recites (1) “an authentication module” that seeks access based on “authentication information” and (2) a “gatekeeper” that “formulate[s] an audit request” and evaluates whether to approve access based on a response to the audit request. The fact that authentication can be a part of a security policy audit (see Pet. 38 (citing Ex. 1301, 11:67–12:6)) does not change the fact that claim 1 recites separate sets of limitations for authentication and auditing that Petitioner must account for in its unpatentability contentions.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Patent Owner does not cite any evidence supporting its assessment of the level of ordinary skill. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’645 patent and the asserted prior art.” slip op. at 9

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

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’645 patent],” so we “need not expressly construe the claim terms.” Pet. 8. Patent Owner also argues that we should apply the plain and ordinary meaning of all claim terms. Prelim. Resp. 6. Nonetheless, Patent Owner argues that Petitioner deviates from the plain and ordinary meaning of certain limitations. Id. at 6– 7. Thus, Patent Owner puts forth its understanding of the plain and ordinary meaning for the following recitations: “configure an access point in response to approval of the device by the gatekeeper” and “device information received from the device in response to the audit request.” Id. at 7–13. Based on the present record, we need not expressly construe any claim terms in order to render the instant Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,117,645
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Sep 24, 2024 · IPR2024-00540 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–10, 13, 16, 18, and 19 were obvious over Krantz alone or Krantz and Herrmann.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1–2. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’350 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’350 patent],” so we “need not expressly construe the claim terms.” Pet. 7. Patent Owner argues to the contrary that we should construe the phrase “reconfiguring the communication port” as “to change the access point itself [rather than something else] in a way that the checked device is able to access the less-restricted portion of the protected network.” Prelim. Resp. 7–9. Patent Owner also argues that we should construe the phrases “audit data pertaining to a device” and “auditing the device in accordance with a security policy” as “requir[ing] that the ‘audit data’ and ‘auditing’ . . . be expressly about the device” rather that “the user.” Id. at 9–12. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We agree with Patent Owner. The ’350 patent distinguishes between user authentication using a username and password and application of a security policy. Ex. 1101, 1:35–39 (“A first level of access control is achieved by requiring authentication of a user. This may be accomplished by requiring the user to enter a username and a password.”), 1:45–48 (“Reliance on mere user authentication includes several disadvantages. For example, there are no provisions to assure that an access device used by the authenticated user meets network security policies.”). Although the ’350 patent describes both user authentication and application of a security policy as being carried out by a gatekeeper, this is accomplished in separate process steps. Id. at 10:38–41 (“GateKeeper 225 authenticates a user, obtains audit data, and applies a security policy in an Authenticate User Step 440, an Obtain Audit Data Step 450 and an Apply Security Policy Step 460, respectively.”). Thus, we are not persuaded that, as Petitioner argues, user authentication in the ’350 patent constitutes the application of a security policy.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,347,350
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 6, 2023 · IPR2023-00692 · APJ Kristina M Kalan · IPR · Institution

  The Board denied institution for claims 1–18 because Petitioner did not adequately explain the Dalcher–Pappas combination or show a motivation to combine.

  RulingsInstitution decision

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

    “In an inter partes review, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 16

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

    “Regarding whether Petitioner demonstrates that a POSITA would have been motivated to combine Dalcher and Pappas, we find the Petition insufficient on this count as well. Petitioner does not specify in its limitation-by-limitation analysis of claim 1 how the two references would be combined, and Petitioner also does not specify, for limitations in which both references are cited, why one of ordinary skill in the art would have been motivated to combine them (as in, e.g., limitations 1.b, 1.c, 1.d, 1.e, 1.f). Regarding Petitioner’s general motivation to combine allegations (Pet. 12– 13), we disagree that Petitioner’s arguments that “both references relate to” the same field, “both provide stack analysis,” both “provide solutions to the same problem,” and both use a “common exploitation technique” are adequate. These statements merely allege that the two references are in the same field of endeavor, but the same field of endeavor analysis is merely the jumping-off point in reaching the determination of whether a claimed invention is obvious; these statements alone fall short of providing a motivation to combine. See K–TEC, Inc. v. Vita–Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to qualify as prior art in an obviousness analysis, references must be analogous art—either from the same field of endeavor, or reasonably pertinent to the problem with which the inventor is involved); Microsoft Corp. v. Enfish, LLC, 662 F. App’x 981 (Fed. Cir. 2016) (unpublished) (insufficient motivation to combine where the only reason given was “that references were directed to the same art or same techniques”). Regarding Petitioner’s remaining argument about modifying the teachings of Dalcher with Pappas to “enhance the tracking of calls, jumps, and returns and to reduce false positives in compromise detection rates” (Pet. 13), we do not find this substantive or supported enough to carry Petitioner’s burden on motivation to combine. Petitioner and its expert do not provide sufficient reasoning as to why or how one of ordinary skill in the art would need to enhance the tracking of calls, jumps, and returns in Dalcher’s system. Id.; Ex. 1002 ¶¶ 185–189. Petitioner and its expert also do not explain how applying Pappas’s alleged teachings about lowering false positives rates would result in fewer false positives in Dalcher’s method, or why one of ordinary skill in the art would have been motivated to apply Pappas’s teachings when, purportedly, “doing so would serve no purpose in Dalcher’s method and would not, in fact, reduce false positives.” Prelim. Resp. 50 (citing Ex. 2001 ¶¶ 78–81); Pet. 13. In sum, we find that Petitioner does not adequately provide an explanation of which reference is meant to map to each of the limitations of claim 1, or an explanation of how Dalcher and Pappas might be combined. Moreover, there is uncertainty about Petitioner’s proffered motivation to combine Dalcher and Pappas, particularly, how Pappas’s tracking of calls, jumps, and returns and its false positive detection technique might be beneficial in a system like that of Dalcher. We have also reviewed Petitioner’s arguments for claims 2–18, but find that those arguments do not cure the shortcomings identified. For these reasons, we find Petitioner fails to establish on this record a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Dalcher and Pappas.” slip op. at 29

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,284,591
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 6, 2023 · IPR2023-00677 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–19 were obvious over Rockwood and Xie.

  RulingsInstitution decision

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

    “4. Summary In view of the foregoing, we determine that Petitioner has not demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Rockwood and Xie. Claims 2–7, 9–15, and 17–19 depend from claims 1, 8, or 16. Accordingly, we also determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion as to these dependent claims. IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’045 patent. Therefore, we do not institute trial.10 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “10 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the petition based on the state of the related litigation. See Prelim. Resp. 2–19.” slip op. at 23

  • BurdenNot shown unpatentable

    “For these reasons, we find Petitioner’s first mapping insufficient to establish a reasonable likelihood that Petitioner can prove the challenged claims unpatentable in view of Rockwood and Xie.” slip op. at 20

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

    “We additionally find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile); but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in Petitioner’s proposed combination. See Pet. 17–18. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,8 whereas Xie’s system looks for similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood.” slip op. at 18

  § 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,578,045
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “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) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11

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

    “Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00657 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 would have been obvious over Rockwood and Xie.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly do not institute an inter partes review of claims 1–20 of the ’224 patent. B.” slip op. at 3

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

    “We also find it unclear which reference Petitioner relies on for the correlating. It appears that Petitioner finds the correlating in Rockwood (the reference with the attacker profile), but if Rockwood is intended to provide the correlating, it is unclear what role Xie has in the combination. We further find that Petitioner does not adequately describe how these references might be combined. Rockwood describes a system that identifies attacks at a network edge as they occur,5 while Xie’s system looks for 5 Notably, the ’224 patent presents itself as an improvement over tools that “may reside at a network edge and may receive network events concerning the network from one or more hosts or systems” because “network edge devices have no ability to establish any sort of context from within the host or system that is generating the event.” Ex. 1001, 1:43–48. Rockwood appears to describe a network edge device. See Ex. 1004, 3:16–4:4 (“Each sensor 20 is located at a network port that receives TCP/IP packets or other similar network communications from network 100.”). similar changes across different hosts within a network over multiple days. There is insufficient explanation of how Xie’s correlating technique would be beneficial in a system like that of Rockwood. Finally, to the extent Petitioner intends to rely on Xie for correlating to an originating object, we find that reliance misplaced. Xie discloses a system that looks for corresponding changes over days across multiple hosts in a network to identify patterns that might be indicative of a problem. But Xie does not describe using correlation to identify an originating object. The correlation is between similar patterns across the network, meaning that, even when Xie identifies a correlation, it is not correlating an event to its originating object, but is merely identifying multiple close vectors (reflecting corresponding file changes) within a detection window. See Ex. 1005, 38. The system then identifies the involved hosts and files, which can be used by “system administrators [to] decide whether the updates are known administrative updates that should be suppressed, or some abnormal events that should be further investigated.” Id. at 39. Although Xie’s example used the “Lion” worm, the worm was known and introduced into the network for testing purposes, not identified by Xie’s system.” slip op. at 18

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

    “object” to the network layer or operating system of the device from which the detected event originated.4 We do not agree that the network layer or OS of the originating system could be “a first object” within the meaning of these claims. The claims require that the first object “act[] on a target,” and we fail to see how the network layer or operating system of the device from 4 Although Rockwood indicates that the system can detect the attacker’s operating system (see, e.g., Ex. 1004, 12:39–41), it does not mention any “network layer.” That term appears to come from the Nielson Declaration. See Ex. 1002 ¶ 65–69. which the detected event originated would be “acting on” the destination IP address, which is what Petitioner identifies as the “target.”” slip op. at 16

  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,257,224
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Oct 11, 2023 · IPR2023-00655 · APJ Scott Raevsky · IPR · Institution

  Institution was denied because Trend Micro did not show a reasonable likelihood that claims 1–30 were unpatentable, principally due to insufficient motivation to combine the asserted references.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’250 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person having ordinary skill in the art (PHOSITA [or POSITA]) at the time of the earliest claimed priority date for the ’250 patent would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or network forensics. More education can supplement practical experience and vice versa. Pet. 26 (citing Ex. 1002 § 81). Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 25 (citing Ex. 2001 ¶¶ 52–56). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’250 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision.” slip op. at 8

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

    “In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2022). The parties do not propose any claim constructions. See Pet. 9–10; Prelim. Resp. 28–29. We determine that no terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

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

    “The Supreme Court instructs us that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Petition contains insufficient articulated reasoning with rational underpinning.” slip op. at 11

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,418,250
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Sep 12, 2023 · IPR2023-00633 · APJ Garth D Baer · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–30 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Lastly, Petitioner asserts another single-sentence argument that “[a]t a minimum, it would have been obvious to include an identity of an object initiating the event, e.g., the checksum of the email attachment Halperin discloses, in the suspicious-event information logged in the central database in Halperin.” Pet. 21–22; see Ex. 1004 ¶ 74 (Petitioner’s expert asserting the same). We disagree with this argument because it does not explain why it would have been obvious to have Halperin’s server collect this information or what would have motivated a skilled artisan to configure Halperin’s server to do so. Absent some rationale, as Patent Owner notes, “[s]uch conclusory assertions are inadequate to satisfy Petitioner’s burden on institution.” Prelim. Resp. 53 (citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Given the deficiencies outlined above, Petitioner has not adequately explained how the asserted prior art accounts for “at a base computer, receiving . . . information including at least an identity of an object initiating the event,” as the challenged claims require.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 8,726,389
• Sophos Ltd. / Sophos Inc. v. Webroot Inc.Institution denied
  PTAB · Aug 14, 2023 · IPR2023-00528 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were unpatentable over Ideses, Mori, or their combination.

  RulingsInstitution decision

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

    “For these reasons, we find that Petitioner has failed to show that Ideses or Mori teaches or suggests “extracting a plurality of static data points from an executable file” and “generating a feature vector from the plurality of static data points using a classifier trained to classify the plurality of static data points based on a collection of data,” where “one or more features of the feature vector are selectively turned on or off based on whether a value of one or more static data points from the plurality of extracted static data points is within a predetermined range,” as recited in each independent claim.4 III. CONCLUSION We determine that Petitioner has not established a reasonable likelihood of proving that at least one challenged claim of the ’844 patent is unpatentable over the cited prior art. We accordingly do not institute an inter partes review.5 IV. ORDER For the reasons given, it is ORDERED that no inter partes review is instituted in this proceeding.” slip op. at 21

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

    “We agree with Patent Owner that the claims are directed to the classification stage, as they require “extracting a plurality of static data points from an executable file” and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the feature vector generated from the static data points that were extracted from the executable file is used “to determine whether the executable file is harmful,” confirming that the claimed method is about classification of an executable file, not creation of a classifier. We also agree with Patent Owner that neither Ideses nor Mori teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points extracted from a file being analyzed are selectively turned on or off based on the value of the static data point.” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844

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.