- Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250 - Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - PTAB · Apr 12, 2023 · IPR2022-01428 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR of claims 1–34 on all grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained below in section II.E.3.a, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing under the district court’s construction and also under that construction as interpreted by Patent Owner. Because the constructions advocated by Patent Owner do not impact the decision whether to institute, we need not resolve this claim construction issue at this time. 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))). 2. “Chip Select Signals,” ”Chip Select Conduits” Claims 6, 11–14, 16–19, and 29–34 recite “chip select signals” or “chip select conduits.” Patent Owner argues that the district court construed the term “chip select signals” and associated “chip select conduits” to “exclude[] situations in which a chip select signal could enable multiple array dies at once” and contends that we should adopt this construction. Prelim. Resp. 23–24 (citing Ex. 2004, 33–34). For the reasons explained below in section II.E.6, we determine that Petitioner has demonstrated a and, therefore, we need not further address this claim construction at this time.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 20 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,787,060 - PTAB · Apr 12, 2023 · IPR2022-01427 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 over all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: Samsung stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 9,318,160 on the grounds presented in Samsung’s petition in IPR2022-01427, Samsung will not pursue an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Ex. 1051. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Pet. 23. Patent Owner argues that we should apply the district court’s constructions for “array die” and “chip select signals.” Prelim. Resp. 21–25. We provide a preliminary analysis of each of these terms below. The parties may address these and any other claim construction issues during the trial, and our final decision including any claim constructions will be based on the full record developed during the trial. 1. “Array Die” The district court construed “array die” as “array die that is different from a DRAM circuit” based on an argument during prosecution of the ’060 DRAM circuits 206A–D in U.S. Patent Application Publication 2008/0025137 A1 (Ex. 1011 (“Rajan137”)). Ex. 2004, 31–32 (citing January 13, 2014 Amendment at 10); see Ex. 1002 (’060 prosecution history), 465 (January 13, 2014 Amendment at 10) (“Rajan does not disclose ‘a plurality of stacked array dies.’ Rajan merely stacks DRAM circuits 206A–D, which are different from array dies.”). Patent Owner argues that we should adopt the district court’s construction so that there is a “consistent construction” between the two proceedings. Prelim. Resp. 23–24. Patent Owner, however, qualifies its position by arguing that “the statements it made during prosecution were specific to Rajan137’s DRAM circuits 206A–D and this should be made clear to the jury through the order instead of having the expert explain it at trial.” Prelim. Resp. 24 n.4 (citing Ex. 2005 (Patent Owner’s objections to the district court claim construction order), 1–2); see Ex. 2005, 2 (“[T]he Court should make clear that the claimed array die is one that is ‘different from Rajan’s DRAM circuits 206A–D.’”). Although Patent Owner appears to walk this qualification back by arguing in its Sur-reply that it withdrew its objections to the district court claim construction (Sur-reply 1–2 (citing Exs. 2010, 2011)), Patent Owner’s position here still appears to be that the term “array die” is one that is different from DRAM circuits 206A–D of Rajan137. For example, in disputing Petitioner’s unpatentability contentions, Patent Owner argues that “the Petition contains no analysis on how or why Kim’s or Riho’s memory dies are different from Rajan137’s DRAM circuits.” Prelim. Resp. 26–27; see also Prelim. Resp. 27 (“Missing from the Petition is any analysis on why the referenced DRAM dies in Grounds 1 and 2 differ from Rajan137’s” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 5 (citing Ex. 1003 ¶ 60). Petitioner also asserts that “[a]dditional training can substitute for educational or research experience, and vice versa,” and Petitioner identifies particular technology with which a person of ordinary skill in the art would 7 At this stage, Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Council) industry standards and DRAM (dynamic random access memory) and SDRAM (synchronous DRAM) memory modules. Pet. 5. Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Pet. 98–99 (citing Ex. 1016 ¶¶ 40, 45–46; Ex. 1030, 135–36; Ex. 1038, 68; Ex. 1003 ¶¶ 589–606). Petitioner argues that Riho teaches that varying impedances between TSVs that result from, for example, manufacturing processes and chip placement, should be taken into account. Pet. 99–100 (citing Ex. 1016 ¶¶ 55–56, 61); see Ex. 1016 ¶ 61 (discussing that the chip located closest to the control chip has “smaller penetrating through resistance” than a chip farther from the control chip). Petitioner contends that a person of ordinary skill “would have been motivated by Riho2 to account for these variations by selectively activating one or more drivers . . . to achieve the optimal driving strength for each ‘data conduit,’ thus saving power.” Pet. 100 (citing Ex. 1018 ¶¶ 96–97, Fig. 7A; Ex. 1017, 1:22–24, 5:11–14, Fig. 5; Ex. 1003 ¶¶ 598–603); see also Pet. 100–01 (asserting that “[o]ther contemporaneous references confirm that adjusting the driver strength to account for the position of a die in stack was well known at the time” (citing Ex. 1039, code (57), 7:46–49, Fig. 6)). 3. Patent Owner’s Arguments and Our Preliminary Analysis Patent Owner makes two arguments against Petitioner’s challenge to” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,318,160 - PTAB · Nov 30, 2022 · IPR2022-00943 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–16: claims 1–11 and 13–16 on obviousness over Hart-787, Fu, and Rosenberg, and claim 12 with Hart-286 added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’267 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 16 (citing Ex. 2001 (declaration of Dr. Michael S. Scordilis) ¶¶ 21–28). Dr. Scordilis asserts that Petitioner’s definition “imports a number of specific and nuanced work-experience requirements that are not necessary to understand the invention of the ’276 patent,” but also notes that he performed his analysis from the point of view of a person of skill as defined by each party and “the differences between [the different levels of skill] did not affect my overall conclusions.” Ex. 2001 ¶¶ 25, 28. Based on the present record including the disclosure in the ’267 patent, for the purposes of institution, we preliminarily adopt Petitioner’s proposed definition of the level of ordinary skill in the art, which is consistent with the level of skill as reflected in the prior art. We find that this definition is consistent with the level of skill in the art as reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our decision here would not be different if we applied Patent Owner’s proposed definition, in which we would substitute “approximately” for “at least” to avoid ambiguity.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner, while arguing that no construction is necessary, asserts that the proper interpretation of “one or more commands” in claim 1 would include “conventional remote control commands.” Pet. 18–19. Patent dispute this assertion. Prelim. Resp. 16–17. We need not construe this claim term at this point in the proceeding for the purpose of institution. Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“On the present record and for the purpose of institution, we determine that Petitioner has adequately showed a proper combination of the prior art references. With respect to arguments regarding field of endeavor, we note that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In re Bigio in an inter partes context). Each of the prior art references is an “audio monitoring method[]” (Prelim. Resp. 28) in which information received by audio-receiving microphones is used to attenuate what is played by a device. Ex. 1004, code (57); Ex. 1005, code (57); Ex. 1006, code (57). are in the same field of endeavor. See Pet. 61 (citing Ex. 1003 ¶ 159). Additionally, based on the current record, we find Petitioner’s motivation to combine argument sufficient for institution. In particular, the distinction Patent Owner seeks to draw between the references does not undermine Petitioner’s argument and evidence that one of ordinary skill in the art would have, in order to effectuate Hart-787’s teaching of attenuating the audio output of a linked device if a user has indicated a command is to be issued, looked to Fu’s teaching of volume adjustment based on a predetermined threshold and Rosenberg’s teaching of a noise level threshold based on a measurement of environmental noise. Pet. 26–30. We additionally agree that Petitioner has, preliminarily and on this record, shown sufficiently that one of ordinary skill in the art would have been motivated to make the combination and that one of ordinary skill in the art would have had a reasonable expectation of success in doing so. Id. at 28– 31 (Ex. 1003 ¶¶ 89, 91, 93). Notably, we find particularly compelling Hart- 787’s express disclosure regarding the goal of improving SNR for spoken commands. Ex. 1004, 1:64–2:37 (cited at Pet. 28), 9:21–25 (describing attenuating the audio more if the ratio between the user’s utterance and the volume of the audio) (cited at Pet. 22, 27).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,930,276 - Google LLC v. Parus Holdings, Inc.InstitutedPTAB · Nov 7, 2022 · IPR2022-00805 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–26, finding a reasonable likelihood of prevailing on the Wise–Dasan obviousness grounds and the Wise–Dasan–Uppaluru ground for claim 26.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony—“throughout the Petition”—for the understanding of a person of ordinary skill in the art as “baseless” because “the expert declaration does nothing more than repeat the unsupported attorney argument in the Petition.” Prelim. Resp. 28. Although we agree with Patent Owner’s general characterization that Mr. Lipoff largely repeats most of the Petition verbatim and that such testimony is of less probative value than more elaborative testimony, we disagree with Patent Owner’s implication that we should therefore summarily discount Mr. Lipoff’s testimony. See id. (“This type of copy-and-paste analysis has no probative value and is therefore unhelpful.”).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 6–7. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and Patent Owner does not propose any different articulation. See Ex. 1002 ¶ 77. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Mr. Lipoff, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“On the record before us, we do not find it necessary to construe any term for purposes of this 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))).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,314 - PTAB · Oct 28, 2022 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Institution
The Board instituted inter partes review of claims 1–5, 8–11, and 14 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with this assessment. We also note that Petitioner takes the position that “[t]he Challenged Claims are unpatentable under both proposed levels,” and Patent Owner takes the position that “the challenged claims are patentable under either proposed level of ordinary skill.” Pet. 8; Prelim. Resp. 7. For purposes of this Decision, we adopt Patent Owner’s proposed articulation of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion to institute an inter partes review were we to adopt Petitioner’s proposal.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“Ex. 1007, 4; Pet. 8–9; Prelim. Resp. 7 (Patent Owner agreeing that “[t]hose constructions are set out in the Petition”). Petitioner states that it “applied these agreed constructions” in the Petition, and Patent Owner also states that it “applies the agreed constructions” in its Preliminary Response. Pet. 8; Prelim. Resp. 7. We adopt these constructions as preliminary constructions for purposes of this Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“(Petitioner asserting that, in the related ITC Investigation, “Patent Owner attempted to narrowly construe three additional phrases . . . . The ALJ has not addressed these new constructions, but as discussed below, Patent Owner’s new constructions should be rejected.”). Patent Owner does not ask that we construe these phrases and, indeed, asserts that it is not necessary for us to do so to decide whether to institute the proceeding. Prelim. Resp. 8–9 (“the Board does not need to resolve that claim construction dispute in order to properly deny institution”); see also id. at 41 (“Petitioners’ arguments on this point all deal with an aspect of [Patent Owner’s] proposed claim construction in the ITC Investigation that is not at issue here”). At this time, we decline to address construction of these additional phrases. 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))).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,378,875 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00882 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–23 on both obviousness grounds: Ji and Sarafa, and Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
- 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 (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 12–13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s proposed construction of “link” is more accurate. Additionally, there is presently no dispute regarding the claim language “changing display of information.” Accordingly, we need not 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086 - Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.Rehearing deniedPTAB · Dec 6, 2016 · IPR2015-00826 · APJ Patrick M Boucher · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving claims 1–8 unpatentable, and granted sanctions for Petitioner’s failure to timely update real-party-in-interest notices.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“IV. REQUEST FOR REHEARING On rehearing, the burden of showing that the Decision should be modified lies with Patent Owner, the party challenging the Decision. 37 C.F.R. § 42.71(d). “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.” Id.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“With respect to Southern Company Gas, Petitioner’s assertion ignores the fact that Southern Company Gas did not result merely from a name change, but rather also from a merger with AMS Corp. that occurred before the name change. See Paper 34, 3. In the related IPR, the Board specifically found that AGLR is a real party in interest, and it follows that the merged entity is also a real party in interest. Atlanta Gas, slip op. at 13 (PTAB Jan. 6, 2015) (Paper 88). The merger with AMS Corp. has meaningful effects that impose an obligation on Petitioner to apprise the Board that Southern Gas Company is a real party in interest. Petitioner’s failure to file timely the updated mandatory notice is especially significant in light of the central nature that the issue of AGLR’s status as a real party in interest played in the related IPR. See Atlanta Gas, Paper 87, 46:6–9 (“The problem that we have, and you will remember, we had to fight like tooth and nail to get these documents. At every turn there was an objection to producing documents related to the real party in interest issue or the privity issue.” (statement by Patent Owner at oral hearing in the related IPR)). With respect to The Southern Company, we do not credit Petitioner’s argument that The Southern Company is not a real party in interest in light of Petitioner’s explicit notification to the contrary. Petitioner cannot have it both ways, identifying The Southern Company as a real party in interest (even “out of an abundance of caution”) to ensure compliance with 35 U.S.C. § 312(b), while simultaneously maintaining that it is not a real party in interest to evade the obligations of 37 C.F.R. § 42.8(a)(3). In light of these various considerations, we conclude that Petitioner has performed conduct that warrants a sanction.” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“be to expunge the Decision and the request for rehearing, dismiss the Petition with prejudice, and order [Petitioner] to pay compensatory expenses and attorney fees to [Patent Owner].” Mot. 5. We disagree that this proposed sanction is proportionate to the harm suffered by Patent Owner. In particular, as Petitioner contends, the harm suffered by Patent Owner is limited because “the estoppel provisions apply to the petitioner and ‘the real party in interest or privy of the petitioner.’” Opp. 6 (citing 35 U.S.C. § 325(e)(1)) (emphasis by Petitioner). There is no requirement that a petitioner identify all of its privies in a petition, and Patent Owner’s ability to address whether The Southern Company was a privy that would give rise to estoppel was not impacted by Petitioner’s original failure to file an updated mandatory notice. Furthermore, “[a] sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated.” 37 C.F.R. § 42.11(d)(4) (emphasis added). We have considered, but are not persuaded by, Patent Owner’s argument that “[a]ny remedy short of termination with prejudice would encourage future petitioners to try to suppress the identification of real parties-in-interest.” Mot. 6. A more limited sanction will have sufficient deterrent effect. We determine that an appropriate sanction, proportionate to the harm suffered by Patent Owner, is to award costs and fees incurred in association with this proceeding from the time after issuance of the Final Written Decision until the date of this Decision. 37 C.F.R. § 42.12(b)(6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“Although we agree with Patent Owner in the abstract that the “ordinary and customary meaning” standard applied to expired patents requires that evidence be viewed through the eyes of one of ordinary skill in the art, Patent Owner stretches that principle too far. See id. at 9–10. “[A] claim construction analysis must begin and remain centered on the claim language itself.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 382 F.3d 1111, 1116 (Fed. Cir. 2004). Patent Owner asks us to deviate far from this cardinal principle by incorporating features of the Fisher S254 regulator that are not recited in the claims themselves, under circumstances in which the Fisher S254 regulator is not explicitly identified as such anywhere in the specification of the ’029 patent. “Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” In re Prater, 415 F.2d 1393, 1404–05 (CCPA 1969). This is particularly the case when the standard we are obliged to apply does not afford Patent Owner a presumption of validity of the patent’s claims. For these reasons, we are not persuaded that we misapprehended or overlooked any aspect of Patent Owner’s claim-construction arguments. Nor are we persuaded that Patent Owner’s evidence in support of those arguments was inadequately considered.” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 5,810,029
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.