- Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentablePTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57
Patent outcomesUS 9,769,427 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,769,427 - PTAB · Jan 15, 2025 · IPR2024-00913 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim in each petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner filed both of its petitions in the instant proceedings on the same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). On this record, we are unpersuaded by Patent Owner’s argument that Blease teaches away from using aggregated ports to form a high-capacity link because “Blease’s disclosure is clear that the focus of its multicast techniques is to reduce, not increase, the amount of multicast traffic flowing through network.” Prelim. Resp. 14. The discussion in Blease of minimizing the bandwidth does not relate to restricting the bandwidth required for a particular stream as Patent Owner seems to assert, but rather to eliminating duplicate transmissions of the same multicast stream to be delivered to multiple subscribers. See Ex. 1005, 2:39–42, 4:50–56 (“The multicast transmission techniques described herein may significantly reduce the amount of multicast traffic . . . . For example, regardless of the number of subscriber devices[] connected to the same network switch that request the same multicast stream, [the] network device[] only sends one copy of the multicast stream to the network switch.”). Therefore, aggregating ports to accommodate transmission of a single multicast stream that requires more bandwidth is a different concept that is unrelated to the discussion in Blease about minimizing bandwidth by increasing efficiency.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Jan 15, 2025 · IPR2024-00989 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 6–12, 14, and 16–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim in each Petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“First, we find no basis for exercising our discretion to deny institution with regard to the Juniper case because that case does not yet have a scheduling order in place, and, as Petitioner points out, the median time to trial in that district is 34.6 months, which puts the trial in approximately July 2026, so there is nothing in the record to indicate that a trial will occur before our deadline for a final written decision in these proceedings. See Fintiv at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier trial date, the Board’s decisions have balanced [Fintiv] factors [1–6].” (emphasis added)); Pet. 67 (arguing that “the court has neither entered a schedule nor set a trial date”); Prelim. Resp. 18 (acknowledging that “the court has not yet entered a schedule or set a trial date for the Juniper case”). Second, following submission of the papers in these proceedings, the Cisco case was dismissed on December 26, 2024. Ex. 3001. Accordingly, there will be no trial in the Cisco case and thus we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“same day, May 31, 2024, and the prior petition in IPR2024-00506 was filed by a different party previously sued for infringement of the ’394 patent in a different district court case. Therefore, there are no serial petitions, as that term is used in General Plastic, filed in these IPRs. However, “our application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Petitioner argues that “no significant relationship exists” between it and Cisco, as they were “accused of infringing the ’394 patent with different products in different court proceedings . . . and have not coordinated regarding the ’394 patent, the separately accused products, or the filing of petitions for IPR.” Pet. 70. Patent Owner provides no evidence of a significant relationship between Petitioner and Cisco, but nonetheless argues that factors 1–5 favor discretionary denial anyway, because Petitioner had knowledge of the Cisco petition, citing the Board’s decision in Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550, Paper 8 at 11–12 (PTAB Mar. 17, 2020) (“Ericsson”), for the proposition that Petitioner’s use of the Cisco petition as a roadmap ties the interests of the petitioners together. Prelim. Resp. 26. We are not persuaded by this assertion. First, Ericsson is not a precedential or informative decision and is not binding on us or informative to our analysis. Moreover, in that case there were five prior petitions that covered all of the challenged claims, and the petitioner admitted crafting its petition based on its review of the prior petitions. Ericsson at 3, 11. Petitioner here has not made such a concession, and moreover, Patent Owner has not presented any evidence that Petitioner actually did use the petition in IPR2024-00506 as a roadmap. Under the circumstances, we find no evidence that Petitioner used the prior petition filed by Cisco as a roadmap, particularly when none of the timing associated with the prior petition was within its control. We find no significant relationship between Petitioner and Cisco. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 6 (Vidal Apr. 19, 2024). Accordingly, based on the particular facts of these proceedings, including the points addressed above, we decline to exercise our discretion to deny the Petitions on that basis.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion Regarding Ground 1 Based on the current record, we find that Petitioner has demonstrated a reasonable likelihood of prevailing for claim 1. Petitioner also contends that claim 11, which is an apparatus claim for a network element that otherwise has similar limitations as claim 1, is rendered obvious for the same reasons discussed above for claim 1. Pet. 57–61. Patent Owner opposes Petitioner’s arguments for claim 11 for the same reasons as discussed above for claim 1. Prelim. Resp. 10–16. Based on the current record, we also find Petitioner has demonstrated a reasonable likelihood of prevailing for claim 11. We need not determine at this time whether Petitioner has demonstrated a reasonable likelihood of prevailing as to dependent claims 2, 4, 6, 7, 12, 14, and 17, also challenged in Ground 1. 37 C.F.R. § 42.108(a).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sufficient showing that a POSITA would have been motivated to apply Hu’s concept of aggregating ports to form a high-capacity port for transmitting multicast streams to the network device disclosed by Blease, and we do not agree that Blease teaches away from incorporating such aggregation. Both Blease and Hu are directed to similar subject matter, processing multicast stream requests, and Hu’s link aggregation addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005, code (57) (“The network device transmits multicast traffic to the subscriber devices.”); Ex. 1007, claim 17 (“A network device to allocate media streams . . . .”), 1:20–29 (disclosing that, if “insufficient bandwidth [is allocated] to video streams, the quality of service degrades”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). On this record, we are persuaded that applying Hu’s port aggregation teaching to Blease’s router would be the application of a known technique to improve the router to allow it to provide multicast streams that require higher bandwidth with predicable results. Pet. 28; see KSR, 550 U.S. at 415–21. As pointed out by Petitioner, these two concepts could be combined together in a straightforward manner and applied to streams that require high-capacity ports, a technique already applied elsewhere in Blease to other ports, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 28–29; Ex. 1003 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Dec 11, 2024 · IPR2024-00893 · APJ Peter D Shapiro · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Juniper would show at least one challenged claim obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“favor of discretionary denial, and factors 4 and 5 weigh against discretionary denial. Because we conclude that, on balance, factors 1–5 do not weigh in favor of discretionary denial, it is not necessary for us to make a determination about whether the merits are compelling. See Director’s Memo at 3–5; CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (Vidal Feb. 27, 2023) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). That being said, as discussed below in the Analysis section, we do find that Petitioner has met its burden of demonstrating a reasonable likelihood of showing that at least one of the challenged claims of the ’986 patent is unpatentable.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Based on the arguments presented in the Petition, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’986 patent challenged in the Petition. Accordingly, we institute a trial on all claims and all grounds asserted in the Petition. The Board has not made a final determination under 35 U.S.C. § 318(a) with respect to the patentability of the challenged claims. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–24 of the ’986 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 57
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(January 7, 2002), a person of ordinary skill in the art would have had: plus at least two years of industry experience or graduate-level academic experience with computer networking. Pet. 20 (citing Ex. 1003 ¶ 111). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’986 patent and the types of problems and solutions described in the ’986 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision, except that we remove the phrase “at least” to avoid unnecessary ambiguity in the level of ordinary skill in the art.7” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim: using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 20. Patent Owner applies the ordinary and customary meaning to the ’986 patent’s claim terms. Prelim. Resp. 3. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - Arista Networks, Inc. v. Corrigent CorporationNo claims unpatentablePTAB · Dec 3, 2024 · IPR2023-00839 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–26 were not shown unpatentable under either § 103 ground because the evidence did not establish the claimed LAG use between MPLS switches or explain how the references would be combined.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Consistent with our Institution Decision, we adopt Petitioner’s articulation of the level of ordinary skill in the art, apart from the phrase “at least” modifying the number of years of professional experience. See Dec. 17–18. As we previously explained, inclusion of such qualifiers renders the articulation vague by being open-ended thus encompassing the level of experience of an expert, someone with more than ordinary skill in the art. Id. at 18. Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 4; PO Resp. 3. Based on the parties’ arguments, we see no need to expressly construe any terms to resolve the dispute 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Pet. Reply 10–11. Despite Petitioner’s arguments, we are not persuaded that a person of ordinary skill would have been motivated by knowledge of Rabie to combine the teachings of RFC 3209 and Raz at the time of the invention of the ’602 patent. First, the ’602 patent claims a priority date of May 6, 2005, which is not challenged by Petitioner (see Pet. 3), whereas Rabie was published more than two months later. Ex. 1021, code (65). Moreover, the question is not whether it may have been known at the time of the invention that a LAG could be used between switches, but rather whether the combined teachings of RFC 3209 and Raz would have motivated a person of ordinary skill in the art to utilize a LAG between switches, as claimed, when neither RFC 3209 nor Raz teaches such usage or suggests the existence of a problem that such usage would solve. We are not persuaded that they would.” slip op. at 36
Patent outcomesUS 9,118,602 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,118,602 - Ens Labs Ltd. v. Unstoppable Domains Inc.Institution deniedPTAB · Nov 22, 2024 · IPR2024-00872 · APJ Michael J Strauss · IPR · Institution
The Board denied institution for claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any ground, relying on Johnson’s unproven status as a printed publication.
RulingsInstitution decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner does not contest Petitioner’s description with regard to the level of skill at this stage of the proceedings. Prelim. Resp. 12. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’344 patent and the cited prior art, we apply it for purposes of this Decision, albeit without the two instances of the phrase “at least,” which introduce ambiguity. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (acknowledging that the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes express construction of any claim terms for our consideration. See Pet. 14 (“Petitioner submits that all claim terms in the ’344 Patent may be interpreted according to their plain and ordinary meaning.”); Prelim. Resp. 12 (“For purposes of this Preliminary Response only, Patent Owner agrees that claim construction is unnecessary.”). whether to institute inter partes review. 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)). At this stage, we do not see the need to construe any claim terms to resolve the issues in dispute.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“of a document on a website archived by the Internet Archive. See Ex. 1018. That a person might have been able to download Johnson through public means is not evidence that Johnson was “made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer, 445 F.3d at 1378. The Frank-White Affidavit’s evidence of public accessibility amounts to little more than Johnson was available on the Internet by December 13, 2019. Pet. 15; Ex. 1018 ¶¶ 1–5, 7, Ex. B. However, because the Wayback Machine is only searchable by URL, as attested to in the Frank-White Affidavit, this does not suffice to support that one of ordinary skill in the art would have sought out the Read the Docs website and, once there, located Johnson without prior knowledge of Johnson and the URL at which Johnson was available. Accordingly, the Frank-White Affidavit alone is insufficient to prove public accessibility of Johnson.” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“that Johnson qualifies as a prior art printed publication. All asserted grounds for unpatentability rely, at least in part, on the disclosure of Johnson. Accordingly, because the record does not persuasively support Johnson as a publicly accessible printed publication, we find that Petitioner has not established a reasonable likelihood of prevailing on any of its grounds of unpatentability. III. CONCLUSION After considering the evidence and arguments presented in the Petition and the Preliminary Response, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims, and thus, we do not institute an inter partes review. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted.” slip op. at 25
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,558,344 - Microsoft Corporation v. Reald Spark, LLCAll claims unpatentablePTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision
Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39
Patent outcomesUS 10,740,985 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,740,985 - PTAB · Oct 3, 2024 · IPR2024-00506 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, and 14–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and any 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) (2024) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1, 2, 4–12, and 14–18 of the ’394 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, computer engineering, electrical engineering, or in an equivalent field, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1002 ¶¶ 62–63). Patent Owner does not dispute this assertion or present its own contention regarding the level of ordinary skill in the art. Based on the record presented, including our review of the ’394 patent and the types of problems and solutions described in the ’394 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner asserts that no claim requires express construction for the grounds presented in the Petition. Pet. 12. Patent Owner states that it applies the ordinary and customary meaning to the ’394 patent’s claim terms but does not propose any express interpretations. Prelim. Resp. 4. In view of these positions, we find that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted and emphasis added)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, we are persuaded that a POSITA would have been motivated to combine Weyman and Li as proposed by Petitioner. Pet. 21–25; Ex. 1002 ¶¶ 84–103; Ex. 1005 ¶¶ 4–5, 76, 98, 104–105, 119, 137–139, 162; Ex. 1007, 5:5–23, 1:17–19, 33:16–35:23. Patent Owner does not dispute that a POSITA would have been motivated to combine Weyman with Li’s channel joining processing unit. Furthermore, both references relate to similar subject matter, processing multicast stream requests, and Li’s channel joining processing unit addresses the problem of potentially overloading a port when doing so. See, e.g., Ex. 1005 ¶¶ 4–5 (“[A] primary object of the present invention is to provide a switching fabric, and units . . . [to] provide distributed multicast routing . . . . [and] to minimi[z]e the usage of bandwidth on links between the units of such a fabric.”); Ex. 1007, 1:17– 19 (“The present invention relates to the field of data communication, and, in particular, to a method, system, and access device for processing multicast service.”), 5:5–23 (“the maximum number of multicast channels that can be selected of a service port needs to be controlled”); see Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“That [two prior art references] address the same problem and that [one of the references] was a known way to address that problem is precisely the reason that there’s a motivation to combine under KSR and our precedent.”). As pointed out by Petitioner, there is no apparent reason why these two concepts could not be combined together in a straightforward manner at the port level, so a POSITA would have had a reasonable expectation of success in doing so. Pet. 21; Ex. 1002 ¶¶ 93–94; see Elekta Ltd. v. Zap Surgical Sys., Inc., 81 F.4th 1368, 1377 (Fed. Cir. 2023) (“Evidence of reasonable expectation of success, just like evidence of a motivation to combine, ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or in some cases, from the nature of the problem to be solved.’”) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000)). Furthermore, we are also persuaded on this record that the same benefits would have existed and motivated a POSITA to combine Li’s channel joining processing unit with Weyman’s aggregated high-capacity ports. See Pet. 21; Ex. 1002 ¶¶ 93–94.” slip op. at 25
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,014,394 - PTAB · Oct 1, 2024 · IPR2024-01081 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 2, 6, and 9–16 on all petition grounds and granted Qualcomm’s motion to join the Samsung IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“§ 42.101(b) does not apply under the circumstances here. See Mot. Reply 3, 5. Referencing § 315(b)’s one-year time bar, the Federal Circuit has explained that § 315(b) “includes a specific exception to the time bar” because “[b]y its own terms, ‘[t]he time limitation . . . shall not apply to a request for joinder under subsection (c).’” Facebook, 973 F.3d at 1333 (alterations in original) (quoting 35 U.S.C. § 315(b)). Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Samsung IPR on June 21, 2024. Samsung Inst. Dec. 1. That same day, Petitioner filed the Petition and the Motion for Joinder. Pet. 77; Mot. 12. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“If a petitioner believes that a claim term requires an express construction, the petitioner must include a statement identifying a proposed construction of the particular term and where the intrinsic and/or extrinsic evidence supports that meaning.” PTAB Consolidated Trial Practice Guide at 44 (Nov. 2019) (“CTPG”).3 “On the other hand, a petitioner may include a statement that the claim terms require no express construction.” Id. In the petition in the Samsung IPR, Samsung contended that “the Board does not need to construe any claim term for purposes of evaluating the prior art,” i.e., that “the claim terms require no express construction.” Samsung Pet. 15. In the Samsung IPR Institution Decision, we determined that “no claim term requires an explicit construction to decide whether [Samsung] satisfies the ‘reasonable likelihood’ standard for instituting trial.” Samsung Inst. Dec. 23. slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (Vidal Aug. 23, 2022) (Director decision) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 2, 6, and 9–16 in the ’449 patent based on the same prior art and the same unpatentability theories as Samsung presents in the Samsung IPR. Compare Pet. 16–71, with Samsung Pet. 15–68; see Mot. Resp. 1. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.1. Further, any differences between the Petition and Samsung’s petition did not result from roadmapping to correct a deficiency in Samsung’s petition because the Board instituted review in the Samsung IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016-01357, Paper 19 at 17; Samsung Inst. Dec. 87. For these reasons, factor (3) does not favor discretionary denial.” slip op. at 35
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,373,449 - PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986
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.