- Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00415 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), citing the unjustified third parallel petition and the resulting burden on the proceedings.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Our Practice Guide provides guidance on handling situations involving multiple petitions by a single petitioner challenging the same patent claims: Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
Discretionary denialPatents in suitUS 7,979,307 - Freewheel Media, Inc. v. Almondnet, Inc.Institution deniedPTAB · Sep 5, 2024 · IPR2024-00414 · APJ Lynne H Browne · IPR · Institution
The Board denied institution of review of claims 1–7 and 9 under § 314(a), finding no justification for this second parallel petition challenging the same claims.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not ‘attempt to antedate or disqualify’ the prior art relied upon by Petitioner.” Prelim. Resp. 6–7.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’307 patent as the petition in IPR2024-00413. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is denied and inter partes review of claims 1– 7 and 9 of the ’307 patent is not instituted on the grounds asserted in the instant Petition.” slip op. at 12
Discretionary denialPatents in suitUS 7,979,307 - PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - PTAB · Aug 6, 2024 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kovvali and Kalman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“on May 8, 2024 (see 35 U.S.C. § 314(b)(1)), and none of the relevant deadlines for fact discovery or expert discovery, or the date of the scheduled Markman hearing, will have passed by that date. As described by Petitioner, fact and expert discovery do not close until next year, the parties have not yet exchanged preliminary claim constructions, and the Markman hearing is not scheduled until December 4, 2024, approximately four months after our deadline for this decision. See Pet. 83. We also find that Petitioner’s diligence in filing the Petition only about a month after receiving Patent Owner’s infringement contentions, and only four months after the filing of the original complaint, supports this factor weighing more strongly against exercising our discretion to deny the Petition. See id. at 82. Accordingly, in view of the parties’ respective arguments, we find that factor 3 weighs strongly against discretionary denial. 4. Overlapping Issues with the Parallel Proceeding Under this factor, Petitioner stipulates that “[i]f the Board institutes trial, Petitioner will cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims, to the extent Petitioner even asserts the same combination in the district court.” Pet. 83. We find that this stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns for potentially conflicting decisions.” Sand at 12. More specifically, if we institute, then by stipulation the court in the Cisco litigation will not have to determine whether the challenged claims of the ’279 patent would have been obvious in view of Kovvali, Kalman, Masters, and RFC 2892, and therefore the risk of inconsistent results is also reduced. against discretionary denial because the stipulation is limited in nature.10 Prelim. Resp. 20. We agree, and therefore find this factor weighs slightly against discretionary denial. Sand at 12 n.5 (“Petitioner stipulates only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition in this case. . . . Petitioner could have stipulated that it would not pursue any grounds raised or that could have reasonable been raised in an IPR . . . . Doing so might have tipped this factor more conclusively in its favor.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision below, Petitioner relies on Kovvali alone as teaching all but two steps recited in independent claim 1, and Petitioner similarly relies on Kovvali alone as teaching all but two limitations of independent claim 15. See Pet. 26–50, 63–64. For those additional steps and limitations, Petitioner relies on combined teachings of Kovvali and Kalman. See id. at 42–47. As Petitioner points out and Patent Owner acknowledges, however, Kovvali was not previously presented to the Office during prosecution of the application for the ’279 patent. See id. at 80; Prelim. Resp. 26. Moreover, notwithstanding Patent Owner’s assertion that Drake has “similar[ities] to how Petitioner characterizes Kovvali,” Patent Owner identifies only that “Drake teaches a ‘management system for local area networks’ that features an ‘allocator,’ which determined ‘if requested facilities are available, and if so, reserves these facilities for the requesting station.’” Prelim. Resp. 26 (citing Ex. 2003, code (57)). In contrast, Petitioner’s reliance on Kovvali goes significantly beyond such high-level generalizations, providing a detailed mapping of Kovvali’s teachings to, for limitations [15.1]–[15.5] and [15.8] of independent claim 15, as well as to the additional limitations recited in each of dependent claims 2, 5, 11–14, and 18, with supporting testimony from Dr. Mir’s declaration. Pet. 27–42, 48–51, 55–56, 59–64, 67 (citing Ex. 1003 ¶¶ 62–103, 120–130, 146–150, 160–185). Notably, Patent Owner does not expressly contest Petitioner’s arguments with respect to those limitations at this stage of the proceeding. See generally Prelim. Resp. Nor does Patent Owner cite any evidence of arguments substantially the same as those presented by Petitioner having been presented during prosecution. Accordingly, on this record and after taking into account Becton, Dickinson factors (a), (b), and (d), cited by Advanced Bionics as relevant to the first part of the two-part framework set forth therein (see Advanced Bionics at 9–10), we are not persuaded that the same or substantially the same art previously was presented to the Office or that the same or substantially the same arguments previously were presented to the Office. Accordingly, we need not proceed to the second part of the framework, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of the Preliminary Response. Prelim. Resp. 3. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,035,279 - Panasonic Automotive Systems Co., Ltd. v. Unm Rainforest InnovationsInstitution deniedPTAB · Aug 5, 2024 · IPR2024-00364 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 8 or substitute claims 44–47, 49, and 50 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under 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) (2024). For the reasons provided below, after considering the Petition and the Preliminary Response, we determine, based on the record before us, there is not a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “in the field of the ’096 patent would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and around two years of experience in the design or development of wireless communication systems, or the equivalent.” Pet. 16 (citing Ex. 1002 ¶ 57). In turn, Patent Owner submits a slightly different description: that a person of ordinary skill in the art “in the technical field of the ’096 patent would have had at least a master’s degree in computer engineering or electrical engineering, or equivalent work experience, along with at least 1 year of experience related specifically to wireless communications, including knowledge of MIMO [(Multiple-Input Multiple-Output)] and OFDM.” Prelim. Resp. 22 (citing Ex. 2001 ¶ 18). For the purpose of determining whether to institute trial, we adopt Patent Owner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’096 Patent Specification and the asserted prior art but our conclusions would be the same under Petitioner’s definition.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Of note, the numerous claim terms construed in the Apple Litigation and referenced by the parties include the terms “data” and “non-data.” See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). Both parties agree that “data” and “non-data” are to be given their plain and ordinary meanings. See Pet. 8 (citing Ex. 1005); Prelim. Resp. 23 (citing Ex. 1005). As demonstrated in the analysis below, for the purpose of determining whether to institute review, we need not construe any claim terms and phrases to resolve the controversy before us. 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 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We agree with Patent Owner that the Joint Proposal’s legacy signal field (L-SIG) does not disclose data as recited in limitation 8[a]. Both parties agree that the term “data” should be construed according to its plain and ordinary meaning. See Pet. 16–18; Prelim. Resp. 22–23. The ’096 Patent utilizes the term “data” in accordance with its plain and ordinary meaning. See Ex. 1001 generally. We find that the Joint Proposal likewise utilizes the term “data” in accordance with its plain and ordinary meaning, to describe data fields that include the PHY sub-layer Service Data Unit, and shown in each of the legacy PLCP packet format, Mixed Mode PLCP packet format, and Green Field PLCP packet format that include the PHY sub-layer Service Data Unit. See Ex. 1008, 11:11–13, Fig. 1. Indeed, in addressing limitation 8[b], Petitioner identifies the Joint Proposal’s data field in the Mixed Mode PLCP format as disclosing “data configured in a second format compatible with a second communication system,” as recited in limitation 8[b]. See Pet. 26–27. Petitioner, however, does not direct us to where the Joint Proposal discloses or describes the legacy signal field (L- SIG) as “data” according to its plain and ordinary meaning. See Pet. 25–26. Petitioner’s citations to the Joint Proposal fail to provide sufficient support for Petitioner’s position that L-SIG discloses “data” in accordance with its plain and ordinary meaning. See Ex. 1008, 11:4–6, 11:18–23. Petitioner further does not provide sufficient explanation why the Joint Proposal’s L- SIG otherwise constitutes “data,” according to the plain and ordinary meaning. See Pet. 25–26. The testimony of Dr. Hansen, cited by Petitioner to support its arguments, is no more illuminating. Compare Pet. 25–26, with Ex. 1002 ¶ 177.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,265,096 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00382 · APJ Karl D Easthom · IPR · Final written decision
Claims 19–29 are unpatentable as obvious: claims 19–21 and 25–27 over Knappe, Elliott, VPN Textbook, and Hendricks; claims 22–24, 28, and 29 with Drell added.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “believes a POSITA would have a bachelor’s degree in electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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 9
- BurdenUnpatentable
“reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32
Patent outcomesUS 9,843,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - Zoho Corporation / Zoho Corporation. PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00380 · APJ Karl D Easthom · IPR · Final written decision
Claims 10–18 are unpatentable as obvious under § 103(a) over Drell, Knappe, Elliott, Hendricks, and Doganata.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. Because any explicit construction would not alter the outcome, an explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“been obvious to implement a VPN tunnel with Drell’s system. Patent Owner does not dispute that Elliott specifically discloses a VPN tunnel that is consistent with the district court construction. Petitioner establishes persuasive motivation for employing Elliott’s well-known VPN tunnel in Drell’s conferencing system with a reasonable expectation of success. See Pet. 24–25, 32–33. For example, as noted above, Petitioner contends that Drell teaches that its “network 106 may comprise a packet switched network, such as the Internet” (Pet. 42 (quoting Ex. 1008, 3:33–38)), and Elliott “teaches communicating conferencing ‘media stream (e.g. voice, fax, data, video, etc.)’ over ‘the public Internet’ using ‘virtual private network (VPN) . . . IP-tunneling.’” (id. (quoting Ex. 1007, 2:66–3:1, 4:6–34, 6:43– 54)). Based on these teachings, Petitioner contends that it would have been obvious to employ a VPN tunnel in Drell’s network as Elliott teaches, in order to “provide Drell with secure communications as the communications traverse Internet network 106” between conference endpoints (rendering the endpoints/appliances secure). See id. at 42–43 (citing Ex. 1003 ¶ 236, “network 18 can be either a public or a carrier supported virtual private network (VPN) or local area network (LAN) which uses IP or IP-tunneling.” Reply 12 (citing Ex.1007, 4:28–32). Therefore, as Petitioner also argues “[t]his network allows for secure transmission of audio data via a VPN tunnel.” Id. (citing Ex. 1003 ¶¶ 234–236). Petitioner also persuasively explains that a POSITA would have understood that VPNs are beneficial because they reduce the need to lease private data lines, which reduces or avoids the costs for implementing a private network by communicating securely over the Internet. [Ex. 1003 ¶ 168] Indeed, the combination of Drell and Elliott is merely the ordinary use of a common technique (using VPN tunneling for conferencing data) in the similar conferencing system of Drell to yield predictable results of (1) securing the transmitted data, and (2) reducing or avoiding costs associated with leasing private data lines. Id. ¶169.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“because Elliot “teaches two independent calls with two independent remote parties connected to the call-center.” PO Resp. 27.10 Patent Owner also argues that Elliott “teach[es] away [from] sharing audio data between remote parties” so that “it would not be combined with Knappe or Drell which involve sharing audio and video between remote parties.” Sur-reply 7. Patent Owner points to teachings about Elliott’s agents to support its arguments. See id. at 4–8. 10 Again, Patent Owner presents this specific argument to unchallenged claim 19. See id. at 26–27. is not, teaching a different way to communicate audio (e.g., via “independent calls” between a call-center agent according to Patent Owner does not teach away from using audio or mixed audio. See PO Resp. 27. As noted above, Patent Owner admits that Elliott discloses “secure audio data . . .between the end user and call center,” therefore Elliott also does not teach away from transmitting and receiving “secure audio data” between remote parties. See PO Resp. 24. Moreover, Patent Owner’s arguments attack the references individually without addressing Petitioner’s specific reliance on different teachings in the references, where the Petition relies on Drell as teaching transmitting audio between remote parties and supplements that with the audio mixing teachings of Knappe, as summarized above. See Pet. 44–48. In addition, contrary to Patent Owner’s arguments, as Petitioner notes and as discussed above, Elliott generally discloses audio and also securing the transmission of audio data with VPN tunnels. See Reply 11 (stating that “Elliott teaches ‘collaborative Web browsing, audio conferencing, video conferencing, and application sharing” (citing Ex. 1007, 1:40–44; Ex. 1003 ¶ 133)). This parenthetical quotation by Petitioner is in a section titled “BACKGROUND OF THE INVENTION.” Ex. 1007, 1:32–45. Petitioner also shows that Elliott teaches the use of ‘“a virtual private network (VPN) . . . which uses IP or IP-tunneling’ for the transmission of ‘voice, fax, data, video’ and ‘[o]ther types of collaboration . . . data’ during the conference.” Reply 11 (emphasis added) (quoting Ex. 1007, 2:66–3:1, 4:30–32, 6:53–54; citing Ex. 1003 ¶ 133); accord Pet. 42 (materially similar showing (citing Ex. 1007, 2:66–1, 4:6–34, 6:43–54).” slip op. at 41
Patent outcomesUS 9,843,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32
Patent outcomesUS 9,094,525 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8 are unpatentable under § 103(a): claims 1–4 over Drell, Knappe, and Voois, and claims 5–8 over Drell, Knappe, Voois, Elliott, and VPN Textbook.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 8. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 7 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.8 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))). Moreover, Petitioner’s proposed construction of “mixed data stream” is not inconsistent with the district court’s construction of “first mixed data stream” and “second mixed data stream,” in that both constructions include at least audio data and video data, and Patent Owner does not argue otherwise.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that the combination of Drell and Knappe teaches limitation [1.1]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [1.1], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.10 See PO Resp. 16–18. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. Patent Owner also fails to explain how the alleged “fundamental” differences in Knappe and Drell have any bearing on how they are used in the proposed combination. See PO Resp. 16–18; Sur-reply 3–4. Rather, Patent Owner’s argument merely points out alleged differences between the references, while essentially ignoring their commonalities. To the extent Patent Owner is arguing that it would not have been obvious to physically combine Drell and Knappe or bodily incorporate them into each other,11 Petitioner states, with supporting testimony from Dr. Houh, that the 10 Although Patent Owner cites to paragraphs 21 and 22 of Mr. Dye’s Declaration (PO Resp. 17), this testimony does not support the arguments for which it is cited. In the Sur-reply, Patent Owner clarifies that the citation should have been to paragraph 20 of Mr. Dye’s Declaration (Sur-reply n. 1), but, as discussed below, this testimony merely repeats arguments made in the Sur-reply. See Sur-reply 4–5. 11 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). proposed combination “permits, but does not require, physical incorporation of elements from Drell and Knappe.” Pet. 22 (citing Ex. 1003 ¶ 168) (emphasis added). In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 12 This is a new argument raised in the Sur-reply. However, even if we consider this argument, we do not find it persuasive for the reasons stated. (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15” slip op. at 25
Patent outcomesUS 9,094,525 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–12 are unpatentable under §103: claims 1, 2, 4, 5, and 7 over Knappe, Elliott, and VPN Textbook; claims 3, 6, and 8–11 with Drell; and claim 12 with Drell and Hoke.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Dec. 10–11. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the evidence of record, including the asserted prior art and the ’332 patent’s specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. Patent Owner does not argue, and we do not discern, that any claim terms are in controversy on the current record.8 See 8 Although Patent Owner mentions the district court’s claim construction for “Virtual Private Network (VPN)” and “VPN tunnel” in connection with its arguments for claims 1 and 8 (PO Resp. 21, 28), Petitioner argues, and we agree, that Patent Owner’s arguments do not suggest that Petitioner’s arguments are inconsistent with any of these constructions. Reply 2; see Tr. 8:1–9:1 (Petitioner’s counsel stating that “We don’t actually have a problem with [the district court’s] construction [of VPN]. I think it may be overly broad, but it doesn’t impact our analysis in either way.”); Tr. 9:2–14 (Petitioner’s counsel stating that “[T]here’s no difference between how Dr. Houh applied tunneling and how the [district court] construed it, so we’re fine with either construction . . . In fact, I see them as the same construction.”); Tr. 47:11–13 (Patent Owner’s counsel stating “I agree with [Petitioner’s counsel] that it may not matter whether his construction, his 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 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
Patent outcomesUS 9,253,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,253,332
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.