- Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01054 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 4–5, 7, 11, and 14–15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for generating or receiving,” “means for anticipating,” and “means for executing” in disclaimed claim 19. Pet. 4–5. Patent Owner argues that “construction of these terms is unnecessary” due to the disclaimer of claim 19. Prelim. Resp. 14. We agree. 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) (alteration in original)).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“properties of one or more objects.” Id. We, therefore, preliminarily find that the language of claim 18 supports Petitioner’s position.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 3–18 on all asserted grounds, finding a reasonable likelihood that Tesla would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“proceeding significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 26, 2024. See generally Ex. 2006. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that Grotmol discloses each recitation of claim 3. We preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 3 is anticipated by Grotmol.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1002 ¶¶ 40–42). At this stage in the proceeding, Patent Owner adopts Petitioner’s proposal. See Prelim. Resp. 5.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for processing” recited in disclaimed claim 20. Pet. 5. Patent Owner argues that “construction of this term is unnecessary.” Prelim. Resp. 14. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,238,344 - Ao Kaspersky Lab v. Open Text Inc.Institution deniedPTAB · Dec 7, 2023 · IPR2023-00895 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show Fratric was a § 102 printed publication, so it did not establish a reasonable likelihood that any challenged claim was unpatentable.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir. 2018) (as amended Sept. 20, 2018). “[T]he key inquiry is whether or not a reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004); see Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018) (explaining that public accessibility is “the touch-stone” in determining whether a reference qualifies as a printed publication). slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we conclude that Petitioner has not met its burden of establishing, by a preponderance of the evidence, that Fratric is a Section 102 printed publication. It follows that Petitioner has not established a reasonable likelihood of proving at least one claim of the ’591 patent unpatentable. III. CONCLUSION Having determined that Petitioner has not established a reasonable likelihood of proving that at least one claim of the ’591 patent is unpatentable over the cited prior art, we do not institute an inter partes review.5” slip op. at 10
§ 102 anticipationPatents in suitUS 10,284,591 - Snap Inc. v. Playvuu, Inc.InstitutedPTAB · Dec 6, 2023 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on its obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”) (emphasis added). The Board’s precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) sets forth six factors that we consider as part of this balanced assessment when determining whether to use our discretion to deny institution. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. (precedential as to § II.A)). We have considered all arguments and evidence presented by both parties as to whether we should exercise discretion and deny institution of inter partes review under Fintiv. Pet. 23–25; Prelim. Resp. 23–28; Prelim. Reply, Prelim. Sur-reply. Petitioner submitted a stipulation titled “Defendant/Counterclaimant Snap Inc.’s Sotera Stipulation,” which was filed in the co-pending district court litigation and, with the exception of the listing of the grounds in the instant proceeding, is the same as the stipulation filed in the Sotera case. Ex. 1047. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in [the co-pending district court litigation] the specific grounds [asserted in this inter partes review], or any other ground . . . that could have been reasonably raised in the IPR” (Pet. 23; Ex. 1047), we do not discretionarily deny institution under Fintiv.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“find that Cohen was previously presented to the Office and the disclosures in the art asserted in the Petition, including Chu, Sherman, Joslin, and Lei, overlap the art before the Examiner during prosecution. We do not provide further analysis of part one of the Advanced Bionics framework because determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 3.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,931,911 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Nov 29, 2023 · PGR2023-00031 · APJ Barbara A Parvis · PGR · Institution
The Board denied institution because Petitioner did not show that any challenged claim was more likely than not unpatentable over the asserted obviousness or indefiniteness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4. A post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324 (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the claims challenged in the patent is unpatentable. Accordingly, we do not institute a post-grant review of the challenged claims of the ’869 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10 (citing Ex. 1004 ¶ 16). Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 33. Considering the subject matter of the ’869 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’869 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the claims are directed to the classification stage, as they require extracting “a plurality of static data points” from an executable file and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the classifier has been “trained to classify” (emphasis added). Further, the claims recite that “features of the feature vector” are selectively turned on or off, indicating that the feature vector has been generated. We also agree with Patent Owner that Petitioner has not shown that Ideses teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points are selectively turned on or off based on the value of the static data point. As explained in the summary of Ideses above, Ideses describes “methods and systems for generating classifiers” (Ex. 1005 ¶ 2) in which “extracted features [may be] identified for pruning to generate the group of classifying features,” and “the selection [may be] based on identifying a classification effectiveness rank for each of the features of the training software applications” or “based on identifying resource requirements for each of the features of the training software applications.” See id. ¶¶ 98, 99. “[T]he group of classifying features [may be] selected based on the significance of the extracted features,” such that “[s]ignificant features, such as those that have a large effect on the classification outcomes, may be retained” and “[i]nsignificant features, such as those that have a small, negligible or no effect on classification outcome may be pruned.” Id. ¶¶ 101, 106. Petitioner argues that “Ideses explains that in the method depicted in Figure 1, ‘[t]he full feature list is optionally selectively pruned,’ i.e., ‘selectively turned off’ as required by [1.e],” and “[f]urther, ‘each feature of the group is selected from-the-ground-up; added to the group as opposed to removed from or retained within a larger group,’ i.e., ‘selectively turned on’ as required by [1.e].” Pet. 33 (citing Ex. 1005 ¶ 71). Petitioner also argues element 1.e is taught by Ideses’s “approaches to pruning insignificant features,” which Petitioner argues are “to selectively includ[e]/exclud[e] features based on whether a feature coefficient ‘is within a predetermined range’ as required” by element 1.e. Id. at 34 (citing, e.g., Ex. 1005 ¶¶ 107, 109–110). But all of the selection and pruning described in Ideses concerns the” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,409,869 - Google LLC v. Nobots LLCAll claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00941 · APJ Josiah C Cocks · IPR · Final written decision
Claims 3–9, 11, and 13–20 are unpatentable under §103 over the asserted prior-art combinations; claims 1, 2, 10, and 12 were disclaimed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“d) Analysis Having considered the parties’ respective positions, we conclude that Petitioner’s view as to meaning of “not denying access” is more consistent with the ’885 patent, and the record at hand, than Patent Owner’s view. In that respect, we agree that “not denying access” is “broader” than “granting access” and encompasses other possible acts in which access is not denied,” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that it is unnecessary to expressly construe any other claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms in controversy must be construed and only to the extent necessary to resolve the controversy); see also Nidec, 868 F.3d at 1017 (citing Vivid Techs in the context of an inter partes review).” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 15–16. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We conclude, at this time, that Petitioner’s reasoning is sound, and amply supported by record evidence. We also conclude that the record readily conveys that a skilled artisan would have had a reasonable expectation of success in combining the teachings of O’Sullivan and Willner to arrive at the invention of the relevant claims of the ’885 patent. On the record before us, we are not satisfied that either Patent Owner’s arguments or the testimony of its declarant, Samuel Russ, Ph.D., suitably take into account what a person of ordinary skill in the art would have gleaned from the teachings of O’Sullivan and Willner. See, e.g., Prelim Resp. 16, 25–27; Ex. 2101 ¶¶ 85–88. In that respect, and on the current record, we credit Dr. Lopresti’s testimony (e.g., Ex. 1003 ¶¶ 78, 79) over the countervailing testimony of Dr. Russ, as, in our view, Dr. Lopresti’s testimony better reflects what a skilled artisan would have understood in combining the teachings of O’Sullivan and Willner. Furthermore, although, as Patent Owner notes, the Petition does not use the specific phrase “reasonable expectation of success” (see, e.g., Prelim. Resp. 15), that such an expectation is present flows intrinsically from Petitioner’s and Dr. Lopresti’s explanation underscoring the proposed ground. Inst. Dec. 18–19.” slip op. at 39
Patent outcomesUS 10,423,885 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,423,885 - Google LLC v. Nobots LLCSome claims unpatentablePTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36
Patent outcomesUS 9,595,008 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,595,008 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Nov 27, 2023 · IPR2023-00840 · APJ Iftikhar Ahmed · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable, principally because Cousins did not disclose the claimed discrepancy identification.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Based on the information presented in the Petition and the supporting evidence, we are not persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review of the challenged claims as set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner and Patent Owner propose constructions for certain claim terms. See Pet. 13–14, 25; Prelim. Resp. 8–12. To the extent necessary, we address some of these arguments as part of our unpatentability analysis below. See infra § III.E.1.c. We, however, determine that no claim terms require express construction. 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“to the selected scraping strategy,” i.e., identifying a discrepancy between two requests. And, as discussed further below, because Petitioner’s contentions as to Cousins’s disclosure are based on Petitioner’s incorrect interpretation of this claim limitation, Petitioner fails to persuade us that Cousins teaches or suggests this claim limitation. Petitioner first relies on Cousins’s disclosure of “two separate received requests where both requests are for the same target site” and Cousins’s teaching to combine those two requests into a single crawl request. Pet. 26 (citing Ex. 1004, 11:17–24). Petitioner fails to explain how this relates to identifying discrepancy between a request and a scraping strategy. As Patent Owner points out, if anything, this disclosure teaches looking for similarities rather than discrepancies between the two requests. After all, Cousins teaches “coalescing multiple requests from different requests sources 136 for similar data into a single crawl, . . . provid[ing] lower overhead, lower latency, and globally higher throughput, [and decreasing] the crawling burden on the target site 128.” Ex. 1004, 11:27–30. No aspect of this disclosure relates to identifying discrepancies or differences.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,965,770 - Forcepoint LLC v. Open Text Inc.Institution deniedPTAB · Nov 13, 2023 · IPR2023-00784 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–13, 15, 16, and 18 were obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6–7 (citing Ex. 1002 ¶¶ 22–25). Patent Owner argues that a person of ordinary skill in the art instead would have had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶ 50. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“(emphasis added)). We recognize that “[d]ifferent claim terms are presumed to have different meanings.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns, 820 F.3d 419, 431 (Fed. Cir. 2016); Phillips, 415 F.3d at 1314. The challenged claims recite “a plurality of factors” that includes “security history” in a list with the “legitimacy” and “behavior” factors. Each of “security history,” “legitimacy,” and “behavior” are different words. We discern nothing in the claim language suggesting that the presumption that these different words carry different meanings is overcome.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“495’s list of criteria relied on by Petitioner includes “historical data associated with the IP address of the URL host” in a list of “information” that Hubbard-495’s reputation scoring module uses to generate scores. Ex. 1004, 18:58–19:22. We find that Petitioner’s argument that “Hubbard- 495 explains that this ‘historical data’ could include historical security data,” such as HTTPS certificate details, active content, and a fingerprint (Pet. 25) is not consistent with the description in Hubbard-495. Hubbard-495 merely describes “historical data associated with the IP address of the URL host” in a list of information, without indicating that any other information in that list comprises “historical data.” Ex. 1004, 18:58–19:22. We also agree with Patent Owner (Prelim. Resp. 38) that the phrase “historical data associated with the IP address of the URL host” (Ex. 1004, 19:3–4) does not indicate that the data relates to security events and Petitioner does not identify disclosure in Hubbard-495 that remedies the deficiency.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,438,386 - Forcepoint LLC v. Open Text Inc.Institution deniedPTAB · Nov 9, 2023 · IPR2023-00786 · APJ Justin T Arbes · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’928 patent (October 2011), a person of ordinary skill in the art would have had “at least a four-year undergraduate degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 8 (citing Ex. 1002 ¶¶ 26–29). Patent had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶¶ 49–51. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“potentially malicious “content” that is requested. Limitations [1A]–[1C], for example, recite intercepting a “request” from a web browser, determining whether the “request” is associated with known malicious “content,” and blocking the “request” when it is so associated. Limitations [1D]–[1I] then similarly recite, when the “request” is not so associated, sending the “request” to one or more web servers, receiving web “content” “in response to [that] request,” processing the received web “content” to create a modified version of a web page, and providing that modified version of the web page to the web browser application for rendering and display. Thus, the “request” in claim 1 is a request for “content,” which is what the one or more web servers return. Dependent claims 4 and 12 likewise recite determining “whether a request for the web content from the web browser application is a first request.” Patent Owner argues, and we agree, that Petitioner’s reading of the claim language “obfuscates the difference between (i) determining whether a request from a web browser is server-directed malware (as disclosed in Step 400 of Devarajan) and” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“for limitation [1B]. As explained above, we interpret the limitation to not encompass determining whether the request itself is malicious. See supra Section II.C. Devarajan discloses two sets of actions: a first set, prior to receiving content from the hosting server, designed to protect the hosting server from server-directed malware transmitted by the client (Steps 400 and 1000–1050 in Figure 10), and a second set, after content has been received, designed to protect the client from client-directed malware transmitted by 88–118 (describing the “bi-directional” detection and removal of malware), Figs. 9–10; see Ex. 2001 ¶¶ 58–60, 71–72. Step 400 is part of the first set. At Step 400, before transmitting the client’s request for content from the website, server 108 “determin[es] whether an event associated with the client 900 or its first network resource address 901 matches one or more of a plurality of event signatures 102 in one or more network security device 100 communicatively coupled to the network 101.” Ex. 1004 ¶¶ 96, 111. Specifically, server 108 examines the request to identify characters (i.e., signatures) that match strings indicative of malicious activity (e.g., a DDoS attack signature or an SQL injection attack signature). Id. ¶¶ 41, 45–48. If a match is found, the request is blocked from reaching hosting server 903 (Step 1010); otherwise, the request is transmitted (Step 1050). Id. ¶¶ 98, 111–112. As Patent Owner correctly points out, Devarajan is entirely silent as to what content client 900 is requesting from website 902 at this stage. See Prelim. Resp. 39; Ex. 2001 ¶ 72. Again, Step 400 looks only at the request from the client (i.e., “an event associated with the client 900 or its first network resource address 901” in Petitioner’s view) to determine whether the request itself is malicious as to the hosting server. See Ex. 1004 ¶¶ 96, 111. Step 400 does not determine whether content associated with the request might be malicious. See id. Accordingly, Petitioner has not shown sufficiently that Step 400 discloses limitation [1B].” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,025,928
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.