• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.No claims unpatentable
  PTAB · Jul 21, 2025 · IPR2021-01150 · APJ Stacey G White · IPR · Remand

  On remand, the Board held that Petitioner had not shown claims 1–18 unpatentable under § 103 over Paxton, Sutton, and Ivershen because the combination did not teach or motivate transmission responsive to correlation.

  RulingsRemand decision

  • RemandOther

    “the Final Written Decision for “not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of claim 1: transmitting an indication of the first host responsive to the correlating.” Palo Alto Networks, 122 F.4th at 1384. In the opinion, the Federal Circuit explained that the Final Written Decision “never made a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton’s step of transmitting a notification of malicious activity after Paxton’s correlation step,” as proposed by Petitioner. Id. at 1385. The Federal Circuit stated that the Board “failed to explain why a person of ordinary skill in the art would not have been motivated to modify Paxton to provide the recited notification as taught by Sutton in response to the correlation disclosed in Paxton.” Id. The Federal Circuit concluded that “[b]y reading Paxton and Sutton in isolation, the Board erred,” and that we vacate and remand for the Board to clarify and explain its holding on whether a person of ordinary skill in the art would have been motivated to transmit the identity of the first host (e.g., to an administrator) as taught by Sutton, responsive to the correlating disclosed by Paxton to improve network security.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the alleged invention of the ’903 patent “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent.” Pet. 13 (citing Ex. 1003 ¶¶ 18–20). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner’s proposed level of ordinary skill is similar, with Patent Owner contending that the ordinary skilled artisan “would be someone with a bachelor’s degree in computer science, electrical engineering, or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” PO Resp. 12–13 (citing Ex. 2019 ¶¶ 27– 31). Similar to Petitioner, Patent Owner also states that a person of ordinary skill in the art “may have additional industry experience in lieu of a formal degree.” Id. at 13.” slip op. at 10

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

    “After review of the current record, we conclude that no express claim construction is necessary for the purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 12

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

    “responsive to the correlation, we are not persuaded that one of ordinary skill in the art would have been motivated to combine the teachings of these references in the manner advocated by Petitioner. Petitioner contends that this combination would only involve “[t]he application of known techniques (e.g., Sutton’s implementation of rules and data to define security policies, disallowed websites, etc.) to improve similar devices (e.g., servers, gateways, firewalls, etc. in Sutton’s and Paxton’s systems) to provide predictable results in the same way (e.g., to provide packet-filtering functions preventing communications with potentially malicious hosts).” Id. at 22–23.” slip op. at 25

  Patent outcomesUS 10,530,903 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,530,903
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCNo claims unpatentable
  PTAB · Apr 30, 2025 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–8 were not shown unpatentable because DiPerna964 and Strack do not teach or suggest the panic button readying itself to perform the claimed functions.

  RulingsFinal written decision

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

    “After review of the ’404 patent’s description, we find no disclosure that pressing the panic button together with another button causes the panic button to ready itself to perform functions (1) and (2) as recited in limitation 1[d]. The closest descriptions we find to limitation 1[d] are that the safety switch readies the panic button to contact 911 (Ex. 1001, 6:59–62), that the panic button may be activated by pressing the panic button with another button (id., 3:59–67, and that the panic button may start a speech recognition process that can trigger the device (id., 7:61–62). Consequently, claim 1 is itself the best source for determining what the claim language means. We determine that the ordinary and customary meaning of the “ready itself” feature of claim 1 is that the panic button “prepares itself to be triggered to perform the panic button functions (1) and (2).” Since the intrinsic evidence is sufficiently clear to discern the meaning of the “ready itself” limitation, we do not resort to extrinsic evidence. See Phillips, 415 F.3d at 1317 (explaining that extrinsic evidence is less significant than intrinsic evidence); Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (Court of Appeals gives primacy to intrinsic evidence and resorts to extrinsic evidence only if consistent with intrinsic evidence); Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1324 (Fed. Cir. 2023) (Court of Appeals stating that its “decision rests solely on the intrinsic evidence”).” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Thus, the ’353 application describes that moving the safety switch into position readies the panic button to contact 911, which is not the same as the panic button being activated to ready itself to perform functions (1) and (2) required by claim 1 of the ’404 patent. Patent Owner’s reliance on disclosures elsewhere in the ’353 application is unavailing. PO Resp. 5–8 (citing Ex. 1006, 15, 17, 19–21, 23, 25); PO Sur-Reply 2–3 (citing Ex. 1006, 15, 17, 19–20, 24–25)). For example, while the ’353 application does mention voice activation with a codeword and activation by depressing of the panic button together with another button (see, e.g., Ex. 1006, 17, 21, 24–25), it does not mention that depressing the panic button together with another button causes the panic button to ready itself to perform recited functions (1) and (2). The application explains that “[t]he [panic] button can send a signal to a controller inside the device to activate [the code word activation] process” and “[t]he [panic] button can start the speech recognition process in one embodiment, to trigger the device.” Ex. 1006, 25. But that describes readying the device for activation by the code word, not readying the button to perform the recited functions. The ’353 application also mentions the word “ready” in relation to using a self-defense mechanism such as pepper spray, which does not appear to be related the readying of the panic button recited in claim 1. Ex. 1006, 15, 19–20. Petitioner has thus met its burden to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority.3 Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for limitation 1[d], which it has not done on this record. PO Resp. 5–8; PO Sur-Reply 2–3.” slip op. at 15

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

    “DiPerna964 discloses a separate “safety” switch that readies the panic button to contact 911 upon being pressed (Ex. 1028 ¶ 41), but there is no mention of pressing the panic button together with another button to cause the panic button to “ready itself” to perform panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit, as limitations 1[d] and 1[e] require. DiPerna964 mentions pressing two buttons together to activate the panic button (see, e.g., Ex. 1028 ¶¶ 17, 23–25, 27), but not to “ready itself” to perform recited functions (1) and (2). Petitioner relies on Strack’s triggering the collection of audio, video, and location data for transmission to a remote location as equivalent to a panic button readying itself to, when activated, perform the panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit. Pet. 15–17 (citing Ex. 1002 ¶¶ 76–88). We do not agree with Petitioner’s contention because Petitioner fails to explain how Strack’s button press that collects and then transmits audio, video, and location data would ready the panic button to perform recited functions (1) and (2). It appears that Strack’s button press readies the device, not the button, to perform the functions. As neither DiPerna964 nor Strack nor their combination teach or suggest limitations 1[d] and 1[e], we determine it is unnecessary to proceed further with the obviousness analysis. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed.Cir.2006) (stating that we consider motivation to combine and reasonable expectation of success only “if all the elements of an invention are found in a combination of prior art references”)).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which appears consistent with the educational level, technology, problems and solutions identified in the ’404 patent and prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 18

  Patent outcomesUS 11,265,404 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

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

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

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

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

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

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9

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

    “1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20

  • Strike new argumentNew argument consideredGranted in part

    “response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45

  Patent outcomesUS 10,268,608 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,268,608
• Motorola Mobility LLC v. Largan Precision Co., Ltd.No claims unpatentable
  PTAB · Jan 24, 2024 · IPR2022-01210 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–27 were not shown unpatentable because Petitioner did not establish a reason to combine Chung Embodiment 11 or 12 with Sekine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s declarant, Dr. Bentley, testifies that “a [POSITA] around the time of the invention would have had a bachelor’s degree in physics or optics, and at least three years of experience in the field of optical design, or its equivalent experience.” Ex. 2001 ¶ 28. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill. We note, however, that the two proposed levels of ordinary skill are similar and our analysis and conclusions would not change under Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “construction, “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); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner does not propose a specific construction for any terms and instead argues that “no claim terms require specific construction to resolve the unpatentability issues presented” in their Petition. Pet. 12. Patent Owner also does not propose any specific constructions in their Response, nor does their declarant, Dr. Bentley. We determine that no explicit constructions are required to resolve the dispute between the parties.” slip op. at 13

  • Exclude

    “G. Motion to Exclude Patent Owner filed a Motion to Exclude the portions of Mr. Aikens declaration testimony present in Exhibit 1003 and Exhibit 1045 relating to or arising from “lens design studies, simulations, or optimizations using Zemax lens design software, or otherwise rely[ing] on undisclosed facts and data.” Paper 45, 1. Because we do not rely on any of this evidence in this decision in a manner adverse to Patent Owner, we dismiss Patent Owner’s Motion to Exclude.” slip op. at 44

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “F. Motion to Amend and Revised Motion to Amend As we determine that motivation to combine has not been shown by a preponderance of the evidence, we dismiss the Motion to Amend and Revised Motion to Amend pursuant to 35 U.S.C. § 316(d) because they were contingent upon our finding a claim of the ’519 patent to be unpatentable. MTA 1; Revised MTA 1.” slip op. at 44

  Patent outcomesUS 9,696,519 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,696,519
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6

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

    “We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7

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

    “PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00745 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 15–20 and 22–33 were not shown unpatentable because Petitioner did not adequately explain how the proposed combination would use active and non-active chip select signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working the field,” and Petitioner identifies particular knowledge that a person of ordinary skill in the art would have had. Pet. 3–4 (citing Ex. 1003 ¶ 52).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues 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 6

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

    “As outlined above, Petitioner presents reasoning as to why a person of ordinary skill in the art would have included chip select signals in Halbert’s Figure 4 device. See Pet. 20–31 (addressing limitations 15.4 and 15.5). But Petitioner’s contentions about the use of chip select signals do not address sufficiently how Halbert’s Figure 4 device would operate with active and non-active chip select signals, as recited in claim 15. Indeed, as Patent Owner points out (PO Resp. 12), Petitioner’s contentions for limitation 15.6 only rely on Halbert’s Figure 2 prior art device. See Pet. 31–32. Petitioner’s lack of explanation as to how active and non-active signals would affect the operation of Halbert’s Figure 4 device is significant, as explained below.” slip op. at 12

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · May 3, 2023 · IPR2022-00063 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–34 were not shown unpatentable under § 103(a) because Petitioner did not establish motivation to divide Jeddeloh’s self-test functionality across Ellsberry’s Control ASIC and Switch ASICs.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we preliminarily adopted Petitioner’s unopposed7 proposed level of ordinary skill in the art. Paper 13, 14. In the Response, Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art, and Dr. Brogioli testifies that “I accept this proposed level of ordinary skill in the art.” PO Resp. 6; see Ex. 2004 ¶ 22. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with 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).” slip op. at 10

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

    “We agree with Patent Owner that it is not necessary to provide an express interpretation of any terms for purposes of this Decision. 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 11

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

    “The record supports that the proposed modifications were informed by the requirements of the claims. The fact that a person of ordinary skill in the art “could” make these changes does not inform us that a person of ordinary skill in the art “would” make these changes. Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”); see ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (“[T]he expert's testimony on obviousness was essentially a conclusory statement that a person of ordinary skill in the art would have known, based on the ‘modular’ nature of the claimed components, how to combine any of a number of references to achieve the claimed inventions. This is not sufficient and is fraught with hindsight bias.”). As discussed by Patent Owner, Dr. Subramanian conceded that there were multiple ways a person of ordinary skill in the art could add selftesting to Ellsberry. See PO Resp. 57 (citing Ex. 2004 ¶¶ 46, 47, 128, 129, 146; Ex. 2005, 121–125). For example, a person of ordinary skill in the art could have incorporated all of Jeddeloh’s self-test logic into Ellsberry’s Control ASIC or duplicated Jeddeloh’s self-test logic into Ellsberry’s Switch ASICs. See Ex. 2004 ¶ 129; Ex. 2005, 121–125, 184–185. Dr. Brogioli credibly testifies that these alternative designs would have been more similar to what was seen in the prior art. Ex. 2004 ¶¶ 46, 47, 128, 129, 146. Accordingly, the record supports that Petitioner’s specific modifications were driven by hindsight view of the roadmap provided by the claim limitations, e.g., the testing data and address/control logic is separated between the data module and the control module (limitations 1[e], 1[g][i], 1[g][ii], 1[g][ii]).” slip op. at 48

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “combination, but Dr. Subramanian’s testimony is unavailing because it essentially repeats what is stated in the Petition, and states that Ellsberry and Jeddeloh “employ known signaling and testing techniques found in many prior art systems,” and combining Ellsberry and Jeddeloh “would therefore have been well within a Skilled Artisans’s abilities, would not have resulted in any unpredictable results and could have been readily accomplished without undue experimentation and with a reasonable expectation of success.” Pet. 32 (citing Ex. 1003 ¶¶ 146–147). We find this testimony to be conclusory, at a minimum, particularly in light of the relatively low level of skill in the art advanced by Petitioner. Further, as discussed below, Dr. Subramanian’s testimony is misguided. We find more persuasive Patent Owner’s contentions that “[p]ortions of Jeddeloh’s self-test module cannot be disassembled and distributed across Ellsberry’s memory module as proposed by Petitioner without creating new pathways or changing how existing components work, which creates timing issues and issues synchronizing the various signals sent to and received from the memory devices.” PO Resp. 62–63 (citing Ex. 2004 ¶ 83). For example, Dr. Brogioli explains that “two new circuits have been created using components disclosed in Jeddeloh and deployed to a distributed, and markedly different architecture than Jeddeloh. Not only are new pathways required within Ellsberry’s architecture that are not contemplated by Jeddeloh, but these pathways in some instances require being bidirectional.” Ex. 2004 ¶ 83. We find this testimony credible, given the nature and extent of the modifications proposed by Petitioner.” slip op. at 39

  Patent outcomesUS 10,217,523 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,523
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.No claims unpatentable
  PTAB · Feb 16, 2023 · IPR2021-01150 · APJ Stacey G White · IPR · Final written decision

  Claims 1–18 were not shown unpatentable as obvious over Paxton, Sutton, and Ivershen because the combination did not establish transmission responsive to the packet correlation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art. Dec. 21. Patent Owner offers a different formulation in the Response, but neither party provides substantive argument as to why its proposed level of skill is correct. See Pet. 13; PO Resp. 12–13. We do not find a material difference between the parties’ proposals. Based on this record, we apply the level of skill laid out in our Institution Decision because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we find for the purpose of this Decision and based on the record before us, that a person of ordinary skill in the art at the relevant time would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 9

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

    “After review of the current record, we conclude that no express claim construction is necessary for the purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11

  • BurdenNot shown unpatentable

    “Patent Owner argues that this combination is insufficient to teach the disputed limitation. PO Resp. 28–44. Patent Owner contends that Petitioner does not explain why any such transmitting would be responsive to the correlation as required by the claims. Id. at 30. In particular, Patent Owner asserts that the proposed combination “would simply result in notifying administrators of potentially infected devices in reaction to finding that ‘a packet [has been] detected as communicated to/from a darknet address (postboundary).’” Id. (quoting Pet. 22). According to Patent Owner, this is not enough because “[t]he detection of darknet activity involves no correlation whatsoever . . . it simply involves a comparison of the original addresses information of a packet to a list of darknet addresses.” Id. Patent Owner further argues that the recited responsiveness also is not taught by Paxton, which identifies a source of packet transmission without teaching any actions that occur responsive to that identification. Id. at 31. This assertion is supported by Patent Owner’s Declarant, Dr. Goodrich, who opines that “Paxton does not disclose or suggest doing anything with the packet matching information unless and until malicious activity is sensed. Although I note that Petitioner argues that Paxton ‘generat[es] a match log including the identity of the packet source address,’ Paxton does not disclose doing anything responsive to, or in reaction to, generating this match log.” Ex. 2019 ¶ 83 (citing Pet. 39; Ex. 1004 ¶ 22). Petitioner responds by arguing that Patent Owner’s “assertion that Paxton does not disclose ‘doing anything responsive to correlating packets,’ is facetious: there would be no purpose in doing that determining at all if it was not recorded or otherwise made known.” Reply 5. Petitioner further contends that “Paxton expressly teaches creating a log and notifying a network administrator of the identified host.” Id. (citing Ex. 1004 ¶ 30, Fig. 2; Ex. 1003 ¶¶ 63, 119; Pet., 14–15, 40; Dec. 38–39). We, however, are not persuaded that this argument was articulated sufficiently in the Petition. Petitioner cites pages 14–15 of the Petition. That portion of the Petition states “[m]atching packets and identifying the true source of packet transmissions is useful for network security, providing a way to trace malicious activity sensed at the edge of a network and identify nodes infected with malicious content.” Pet. 14–15. It is true that Paxton states that the ability to identify the true source of a packet transmission “can provide a way to quickly identify nodes that are infected with malicious content, which can allow the network administrator to better identify the scope of malicious content.” Ex. 1004 ¶ 30. We find no argument in the Petition that asserts “allow[ing] the network administrator to better identify the scope of malicious content” means that a transmission is made (or any other action is taken) responsive to the correlation. Sutton also fails to fill in this gap. Petitioner argues that “Sutton discloses transmitting the indication of the first host (e.g., notifying an administrator) responsive to identifying a device associated with malicious activity.” Pet. 41. Sutton “monitors communications to identify access attempts to/from darknet addresses” and if such an attempt is found “a notification or other corrective action can be provided identifying such potentially malicious activity.” Id. (quoting Ex. 1007, code (57)). Sutton further states that if devices associated with malicious activity “reside within the enterprise network, a notification 355 can be provided to the enterprise network (e.g., a network administrator) indicating that such devices are potentially infected with malicious software code.” Id. (quoting Ex. 1007, 10:60–11:3). Sutton identifies malicious nodes by determining whether a communication is destined or originating from an address in the darknet address database. Ex. 1007, 6:15–22. Thus, if a darknet address is found then Sutton will transmit a message indicating the malicious presence. This leaves us with a correlation from Paxton with no specific actions taken postcorrelation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.” slip op. at 25

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

    “Patent Owner argues that this combination is insufficient to teach the disputed limitation. PO Resp. 28–44. Patent Owner contends that Petitioner does not explain why any such transmitting would be responsive to the correlation as required by the claims. Id. at 30. In particular, Patent Owner asserts that the proposed combination “would simply result in notifying administrators of potentially infected devices in reaction to finding that ‘a packet [has been] detected as communicated to/from a darknet address (postboundary).’” Id. (quoting Pet. 22). According to Patent Owner, this is not enough because “[t]he detection of darknet activity involves no correlation whatsoever . . . it simply involves a comparison of the original addresses information of a packet to a list of darknet addresses.” Id. Patent Owner further argues that the recited responsiveness also is not taught by Paxton, which identifies a source of packet transmission without teaching any actions that occur responsive to that identification. Id. at 31. This assertion is supported by Patent Owner’s Declarant, Dr. Goodrich, who opines that “Paxton does not disclose or suggest doing anything with the packet matching information unless and until malicious activity is sensed. Although I note that Petitioner argues that Paxton ‘generat[es] a match log including the identity of the packet source address,’ Paxton does not disclose doing anything responsive to, or in reaction to, generating this match log.” Ex. 2019 ¶ 83 (citing Pet. 39; Ex. 1004 ¶ 22). Petitioner responds by arguing that Patent Owner’s “assertion that Paxton does not disclose ‘doing anything responsive to correlating packets,’ is facetious: there would be no purpose in doing that determining at all if it was not recorded or otherwise made known.” Reply 5. Petitioner further contends that “Paxton expressly teaches creating a log and notifying a network administrator of the identified host.” Id. (citing Ex. 1004 ¶ 30, Fig. 2; Ex. 1003 ¶¶ 63, 119; Pet., 14–15, 40; Dec. 38–39). We, however, are not persuaded that this argument was articulated sufficiently in the Petition. Petitioner cites pages 14–15 of the Petition. That portion of the Petition states “[m]atching packets and identifying the true source of packet transmissions is useful for network security, providing a way to trace malicious activity sensed at the edge of a network and identify nodes infected with malicious content.” Pet. 14–15. It is true that Paxton states that the ability to identify the true source of a packet transmission “can provide a way to quickly identify nodes that are infected with malicious content, which can allow the network administrator to better identify the scope of malicious content.” Ex. 1004 ¶ 30. We find no argument in the Petition that asserts “allow[ing] the network administrator to better identify the scope of malicious content” means that a transmission is made (or any other action is taken) responsive to the correlation. Sutton also fails to fill in this gap. Petitioner argues that “Sutton discloses transmitting the indication of the first host (e.g., notifying an administrator) responsive to identifying a device associated with malicious activity.” Pet. 41. Sutton “monitors communications to identify access attempts to/from darknet addresses” and if such an attempt is found “a notification or other corrective action can be provided identifying such potentially malicious activity.” Id. (quoting Ex. 1007, code (57)). Sutton further states that if devices associated with malicious activity “reside within the enterprise network, a notification 355 can be provided to the enterprise network (e.g., a network administrator) indicating that such devices are potentially infected with malicious software code.” Id. (quoting Ex. 1007, 10:60–11:3). Sutton identifies malicious nodes by determining whether a communication is destined or originating from an address in the darknet address database. Ex. 1007, 6:15–22. Thus, if a darknet address is found then Sutton will transmit a message indicating the malicious presence. This leaves us with a correlation from Paxton with no specific actions taken postcorrelation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.” slip op. at 25

  Patent outcomesUS 10,530,903 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,530,903
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Dynamics Inc.No claims unpatentable
  PTAB · Aug 10, 2021 · IPR2020-00499 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1 and 5–8 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed retrieval of a digital representation from multiple representations.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would have combined the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). For example, Petitioner states that a person of ordinary skill in the art would have been motivated to use Shoemaker’s teachings to improve the functionality of Gutman’s card and make it more commercially convenient for card users.” Pet. 24–25 (citing Ex. 1002 ¶ 74). But neither the Petition nor its declarant, explain why altering either Gutman or Shoemaker would improve the functionality over what is expressly disclosed in each reference. Nor does the Petitioner or the declarant explain with how the combination of teachings would be more commercially convenient for card users over what is disclosed originally in each reference. Petitioner further contends that “because these changes would have been routine implementation details, a [person of ordinary skill in the art] would have had more than a reasonable expectation of success in implementing them.” Pet. 25 (citing Ex. 1002 ¶ 74). Accordingly, based on the entirety of the trial record, we find Petitioner presents insufficient persuasive evidence to demonstrate by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Gutman with those of Shoemaker as articulated by Petitioner to render claims 1, 5–8 obvious under 35 U.S.C. § 103.” slip op. at 34

  • Skill levelSkill level board ownOther

    “Based on our review of the ’153 patent, the types of problems and solutions described in the ’153 patent and cited prior art, and the testimony of both Mr. Halliday (see Ex. 1002 ¶¶ 33–34) and Mr. Zatkovich (see Ex. 2033 ¶ 17), for purposes of this Decision, we find that a person of ordinary skill in the art at the time of the claimed invention would have had at least a Bachelor’s degree in electrical engineering, or an equivalent technical degree and three years of experience working with magnetic fields to transmit or otherwise convey information, magnetic stripe cards and emulators, RFID systems, and cellular network communications. Although we find Patent Owner provides insufficient evidence explaining why a person of ordinary skill in the art would have also had experience specifically with point of sale systems and therefore do not include that additional requirement in our finding above, we note that our analysis would be the same under either party’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 neededOther

    “Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1005, 1017 (Fed. Cir. 2017); 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.”).” slip op. at 14

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

    “Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. 2016); Metalcraft of Mayville, Inc. v. The Toro Company, 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“[I]t is insufficient to simply conclude the [prior art] combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); see Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Petitioner proffers arguments that a person of ordinary skill in the art could have combined the teachings of Gutman and Shoemaker, but fails to explain sufficiently why they would have chosen the specific features relied upon by Petitioner to read on the claim. See also Forest Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 934 (Fed. Cir. 2019) (“An invention is not obvious simply because all of the claimed limitations were known in the prior art at the time of the invention. Instead, we ask whether there is a reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the references, and that would also suggest a reasonable likelihood of success.”) (citation omitted)). Rather, it appears that Petitioner selects disparate parts of the prior art to combine in order to meet the claim limitation. We understand that a person of ordinary skill is a person of ordinary creativity, not an automaton, but “[w]ithout any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.” Metalcraft, 848 F.3d at 1367 (“‘[T]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation,’ we also recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (quoting KSR, 550 U.S. at 420–21)). Conclusory statements alone, even those provided by a declarant, are inadequate to demonstrate a rationale for why a person of ordinary skill in the art would have combined the teachings from prior art references. NuVasive, 842 F.3d at 1383. Instead, Petitioner’s arguments must be supported by a “reasoned explanation.” Id. (citing In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002)). For example, Petitioner states that a person of ordinary skill in the art would have been motivated to use Shoemaker’s teachings to improve the functionality of Gutman’s card and make it more commercially convenient for card users.” Pet. 24–25 (citing Ex. 1002 ¶ 74). But neither the Petition nor its declarant, explain why altering either Gutman or Shoemaker would improve the functionality over what is expressly disclosed in each reference. Nor does the Petitioner or the declarant explain with how the combination of teachings would be more commercially convenient for card users over what is disclosed originally in each reference. Petitioner further contends that “because these changes would have been routine implementation details, a [person of ordinary skill in the art] would have had more than a reasonable expectation of success in implementing them.” Pet. 25 (citing Ex. 1002 ¶ 74). Accordingly, based on the entirety of the trial record, we find” slip op. at 32

  Patent outcomesUS 8,827,153 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,827,153

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.