- Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- 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 classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“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 classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,409,869 - Wangs Alliance Corporation D/B/A Wac Lighting Co. v. Philips Lighting North America CorporationInstitution deniedPTAB · Feb 15, 2017 · IPR2016-01455 · APJ Trevor M Jefferson · IPR · Institution
The Board denied institution because the challenged claims were entitled to the May 9, 2002 priority date, making Schie unavailable as prior art to every asserted ground.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“that the ’399 patent and ’079 provisional satisfy the written description requirement showing that the inventors possessed the conventional MR16 socket claimed in the ’679 patent. In this case, the ’079 provisional and ’399 patent disclose the general types of connectors and housing using terms a person of ordinary skill in the art would understand include the general types of lighting of which the MR16 is just one variant. See Ex. 2001, 7.24 (discussing “standard MR16 lamps” using “a 2-pin or turn-and-lock base”); Prelim. Resp. 6 n.6 (providing citations for MR16 bulbs as being well known and conventional). The general housing disclosures in the ’399 patent and ’079 provisional provide sufficient detail necessary to convey to a person of ordinary skill in the art that the scope of the claims include non-screw type bases such as halogen and pin-type bases and connectors. See also Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1347 (Fed. Cir. 2013) (“[I]n some cases, broad or generic disclosures can adequately describe particular constituent species.”); Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003) (“A specification may . . . contain a written description of a broadly claimed invention without describing all species that [the] claim encompasses.” (alteration in original)); Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (noting that level of detail required to establish possession of the claimed subject matter as of the filing date “varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology”). The disclosure of the type of bulb housing, e.g. halogen, and type of connectors, e.g. pin-type, is adequate written description support for the particular type of housing claimed in the ’679 patent.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Based on the foregoing, we find that the priority date of the challenged claims of the ’679 patent is the date of the ’079 provisional, May 9, 2002, as both the ’399 patent and the ’079 provisional provide adequate written description support for the “conventional MR16 socket limitation” of the challenged claims. 2. Schie (Ex. 1003) as Prior Art to the ’679 Patent Given our finding above that the priority date of ’679 patent is May 9, 2002, we find that Petitioner has not shown that Schie, with an earliest available priority date of August 22, 2002 (Pet. 24–39; Prelim. Resp. 1–2), is prior art to the ’679 patent under 35 U.S.C. § 102(e). Because each of Petitioner’s grounds for challenging the ’679 patent relies on Schie (Pet. 3– 4, 41–67), we find that Petitioner has not demonstrated a likelihood that it would prevail in showing that claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679 patent are unpatentable.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Schie (Ex. 1003) as Prior Art to the ’679 Patent Given our finding above that the priority date of ’679 patent is May 9, 2002, we find that Petitioner has not shown that Schie, with an earliest available priority date of August 22, 2002 (Pet. 24–39; Prelim. Resp. 1–2), is prior art to the ’679 patent under 35 U.S.C. § 102(e). Because each of Petitioner’s grounds for challenging the ’679 patent relies on Schie (Pet. 3– 4, 41–67), we find that Petitioner has not demonstrated a likelihood that it would prevail in showing that claims 1, 3–6, 11, 17–19, 26, 38, and 43–45 of the ’679 patent are unpatentable.” slip op. at 17
§ 102 anticipation§ 112 disclosurePatents in suitUS 7,358,679
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.