• Atoptech, Inc. v. Synopsys, Inc.All claims unpatentable
  PTAB · Jan 19, 2016 · IPR2014-01159 · APJ Peter P Chen · IPR · Final written decision

  Claims 5, 23, 24, and 27 are unpatentable as obvious; claim 31 was not shown anticipated, and claim 26 was not shown obvious.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Decision to Institute, we construed “place and route unit (PRU).” We determined that the broadest reasonable interpretation of that term is, “a section of the IC design created to represent the physical partitioning of the IC design.” Dec. to Inst., 10. Neither party disputes that construction in their post-institution filings.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “in the underlying patent. In re Cuozzo, 793 F.3d at 1280; Microsoft Corporation v. Proxyconn Inc., 789 F.3d at 1298. Here, the specification expressly defines atomic blocks: Defining Atomic ("A") blocks (sometimes called units) – “A” blocks are the netlist blocks that will be physically partitioned to create place and route units (PRUs). "A" blocks may contain only standard cells or they may contain additional levels of hierarchy. For the purpose of partitioning the circuit design into PRUs, the "A" blocks are indivisible. Ex. 1001, 4:8–12. Consistent with the patentee’s express definition of atomic block, we determine the broadest reasonable interpretation of atomic block to be, “a netlist block that is indivisible for the purpose of physically partitioning the circuit design into place and route units (PRUs).”” slip op. at 11

  • Skill levelSkill level board ownDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner has not proposed a level of ordinary skill in the art. Patent Owner proposes that one of ordinary skill in the art would possess a “Bachelor of Science degree in Electrical Engineering, Computer Engineering, or a closely related field,” as well as “a minimum of one to two years of professional experience in the engineering development of integrated circuit technology.” Ex. 2004 (Declaration of Daniel Foty, Ph.D.), ¶ 15. At the oral hearing, Petitioner stated it had no dispute with Patent Owner’s proposal. Tr. 16:21–17:2. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 25

  Patent outcomesUS 6,567,967 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,567,967
• Atoptech, Inc. v. Synopsys, Inc.All claims unpatentable
  PTAB · Jan 19, 2016 · IPR2014-01145 · APJ Trenton A Ward · IPR · Final written decision

  Claims 1–4 and 7–11 are unpatentable as obvious over Belkhale alone and over Belkhale in combination with Tom.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “view of the ’127 patent, a person of ordinary skill in the art would have a minimum of a Bachelor of Science degree in Electrical Engineering, Computer Engineering, or a closely related field and would have a minimum of one to two years of professional experience in the development and analysis of digital electronic circuits. Ex. 2004, Declaration of Dr. Martin G. Walker ¶ 22. Petitioner does not disagree with Dr. Walker’s opinion as to the proper level of ordinary skill in the art. Pet. Reply 17. Based on our review of the ’127 patent and the testimony of Patent Owner’s Declarant, we adopt Patent Owner’s definition of a person of ordinary skill in the art at the time of the claimed invention. Furthermore, as noted in the Decision on Institution, the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Dec. on Inst. 23 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)).” slip op. at 5

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

    “circuit under non-default timing constraints known as exceptions.” Ex. 1001, 1:8–11; see id. at Title, Abstract. The Specification adds “[e]xceptions are specified by the circuit designer as individual syntactic units called ‘exception statements’ which are comprised of a ‘timing alteration’ and a ‘path specification.’” Ex. 1001, 1:58–61. The timing alteration instructs the timing analyzer how to alter the default timing constraints for paths through the circuit to be analyzed which satisfy the path specification. Id. at 1:61–63. The Specification further states, “[t]he path specification consists of one or more ‘path specifiers,’ with each path specifier taking an ‘argument.’ In order for a path specification to be satisfied, each argument of each of its path specifiers must be satisfied.” Id. at 1:64–67. In view of the foregoing, we maintain the construction provided in the Decision on Institution (Dec. on Inst. 7) and construe the term “exception” as “non-default timing constraints.”” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Petitioner counters that Patent Owner’s arguments fail to provide any evidence that a “set” must include more than a single data item. Pet. Reply. 3. Petitioner argues that both the ’127 patent and Belkhale refer to a “null set,” which is a set having no data items. Id. (citing Ex. 1001, Fig. 9A, 9E; Ex. 1005 at 737). We agree with Petitioner that the term “table” does not require multiple data items and, likewise, that the term “timing table” does not require multiple delay values. Although the Specification discloses an exemplary “RF timing table” as having four RF values (Ex. 1001, 9:54–57), the claim language is broader and not restricted to a specific type of table or number of data items in the table. To require otherwise would improperly import a limitation from the Specification into the claim. See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). In view of the foregoing, we maintain the construction provided in the Decision on Institution (Dec. on Inst. 7) and determine the broadest reasonable interpretation of “timing table” is a “table having a timing value.”” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “We are persuaded that Belkhale’s false paths and false sub graphs teach or suggest the claimed “exception.” As Petitioner observes, Belkhale describes false paths as paths that are not logically realizable and must be detected and eliminated from the timing analysis. Pet. 13 (citing Ex. 1005, 736). Likewise, Belkhale explains that removing an entire false sub graph from timing consideration is advantageous because multiple paths may be simultaneously removed from consideration. See Pet. 13–14 (citing Ex. 1005, 736; Ex. 1007 ¶ 78). Accordingly, we are persuaded by Petitioner’s argument that Belkhale’s false path and false sub graph are each a non-default timing constraint (i.e., an exception) because they represent circuit pathways that are not logically realizable and must be eliminated from the timing analysis. Id. Second, we also are persuaded Petitioner has established sufficiently how Belkhale’s ordered pair vertices or Algorithm 1 disclose “marking certain points in a circuit description according to their being referenced by,” recited in claim 1, a false path or false sub graph. As Petitioner points out, Belkhale defines false paths in a multiplexer circuit with ordered pair vertices. Additionally, Petitioner separately equates Belkhale’s use of “three separate data structures” BG(v), EG(v), and IN(e) to associate points in the circuit description with the false sub graph. Pet. 21–22; see Pet. 16–18 (explaining Algorithm 1 in operation). We understand Petitioner’s latter argument to be that Belkhale’s timing graph “G” discloses a circuit description, the false sub graphs disclose exceptions, and the three data sets define vertices and edges according to a relationship to the false sub graphs.” slip op. at 13

  Patent outcomesUS 6,237,127 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,237,127
• Atoptech, Inc. v. Synopsys, Inc.All claims unpatentable
  PTAB · Jan 19, 2016 · IPR2014-01150 · APJ Peter P Chen · IPR · Final written decision

  Claims 1, 4, 8, 9, 12, 16, 19–22 are unpatentable as obvious over Fields and Su; claims 32–36 are unpatentable as anticipated by Su.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Owner proposes that one of ordinary skill in the art would possess a “Bachelor of Science degree in Electrical Engineering, Computer Engineering, or a closely related field,” as well as “a minimum of one to two years of professional experience in the engineering development of integrated circuit technology.” Ex. 2004 (Declaration of Daniel Foty, Ph.D.), ¶ 15. At the oral hearing, Petitioner stated it had no dispute with Patent Owner’s proposal. Tr. 16:21–17:2. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “in the underlying patent. In re Cuozzo, 793 F.3d at 1280; Microsoft Corporation v. Proxyconn Inc., 789 F.3d at 1298. Here, the specification expressly defines atomic blocks: Defining Atomic ("A") blocks (sometimes called units) – “A” blocks are the netlist blocks that will be physically partitioned to create place and route units (PRUs). "A" blocks may contain only standard cells or they may contain additional levels of hierarchy. For the purpose of partitioning the circuit design into PRUs, the "A" blocks are indivisible. Ex. 1001, 4:8–12. Consistent with the patentee’s express definition of atomic block, we determine the broadest reasonable interpretation of atomic block to be, “a netlist block that is indivisible for the purpose of physically partitioning the circuit design into place and route units (PRUs).”” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We agree with Petitioner that the ’967 patent, Fields, and Su are all directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 19

  Patent outcomesUS 6,567,967 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,567,967
• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41

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

    “As discussed in Section IV.B.2.e., a petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59

  Patent outcomesUS 8,001,434 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,001,434
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 22, 2015 · IPR2015-01050 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the means-plus-function claims lacked sufficient structural disclosure and Feldmeier did not establish claim 63’s forwarding-permission limitation.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’853 patent.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” (Ex. 1001, 5:21–25), or some other processor running IOS (Ex. 1001, 1:33–37). It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” (id. at 3:36–39). Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): “means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel”; “means for making a routing decision in response to said access result”; and “means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet.” Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner argues, “Feldmeier’s packet forwarding is not the same as determining forwarding permissions (e.g., whether a packet is restricted from being transmitted from a selected source device to a selected destination device.)” Prelim. Resp. 31–32. Patent Owner further argues Feldmeier does not process a packet based on a forwarding permission. Id. We agree. Petitioner purports to show that “matching one or more characteristics of said packet with one or more access control specifiers,” recited in claim 63, results in “permission” to forward a packet. Petitioner states that “the information obtained from the CAM lookup governs the decision of whether to route or discard the packet.” Pet. 40 citing (Ex. 1003 ¶ 106). We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner (Pet. 40), “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Ex. 1005, 13:24– 27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translations according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input or output permission by, among other things, “determining all of the successful matches”). Based on the above passages, Petitioner has not shown evidence that an affirmative match in Feldmeier results in a permission of packet forwarding, as required by claim 63. For the reasons stated above, we determine Petitioner has not shown sufficiently that Feldmeier discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Feldmeier.” slip op. at 14

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,023,853
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 22, 2015 · IPR2015-01049 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “(“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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); see 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1, 2, 5, 7– 10, 12–16, 18–22, 25, and 28–31 of the ’577 patent and, therefore, deny the Petition for inter partes review..” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner, “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Id. at 13:24–27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translation[s] according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

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

    “In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices. Ex. 1001, 1:4–10. Patent Owner also cites certain dictionary definitions. Id. at 10–11. Patent Owner states that “modifying” transmission is “nowhere in the record.” Id. Nonetheless, Patent Owner does not explain why the embodiment cited by the Petitioner above is not relevant to construing the claims. Because the embodiment cited by Petitioner suggests that access control may be used to change the destination address of a packet, we apply a broader definition than proposed by Patent Owner. We find the broadest reasonable construction of “access control” to include restrictions or modifications on the intended destination address to which a packet is to be transmitted.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Oct 21, 2015 · IPR2014-00735 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 4, 7, 10, 13, 14, and 16–21 are unpatentable as obvious over Degnbol; claim 15 is unpatentable as obvious over Degnbol and DeLorme.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “testified regarding Degnbol’s “incognito” mode. Ex. 1017, 215:22–218:22. Petitioner moves to exclude this redirect testimony as beyond the scope of Mr. Zatkovich’s Declaration (Ex. 2017) and Petitioner’s cross examination. Paper 43 (Mot. to Exclude), 1–3. Patent Owner does not cite to or rely on this testimony. Accordingly, we deny Petitioner’s Motion to Exclude as moot.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” We resolve the question of obviousness on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “To the extent that Patent Owner’s characterization of the Specification’s description of “transmit status” is accurate, it is not consistent with how the term “user sending status” is used in claim 7. Specifically, claim 7 recites that “the central unit receives the user sending 2 The Specification generally uses the term “central server,” while the claims generally use the term “central unit.” The parties do not argue that these terms should be accorded different meanings. Reading the claims in light of the Specification, we understand these terms to be synonymous. status from the second mobile communications device and the information defining the locations of the first and the second mobile communications devices” and “if there is a match and depending upon the user sending status, effects the transmission to the first mobile communications device of locating information.” As Petitioner points out (Reply 18), claim 7 specifies that the central unit receives from the second mobile communications device both a user sending status and information defining location of the second mobile communications device. The user sending status is used by the central unit, along with the information defining the device’s location, to determine whether to send locating information to another device. Patent Owner’s proposed construction, and the explanation provided by Mr. Zatkovich, would exclude the second communications device from transmitting to the central server the very information specifically recited in claim 7. Because Mr. Zatkovich’s testimony, specifically his statement that “[t]he purpose of the user sending status in this example is to enable and disable the transmission of locating information from device 19 to the central server,” Ex. 2017 ¶ 56, is directly contradicted by the language of claim 7, the testimony lacks credibility. Moreover, as explained in the Decision to Institute (Dec. 11–12), the Specification describes embodiments in which the transmit status is transmitted to the central server and controls whether the central server transmits locating information to another device. Ex. 1007, 6:44–50, 8:1–7, 9:3–8, 10:50–59, 11:24–29. These passages provide additional support for Petitioner’s proposed construction of “user sending status.” Patent Owner’s proposed construction would exclude these embodiments.” slip op. at 17

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

    “We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location. Patent Owner also argues that our construction “ignores the word ‘locating’” and “conflates the notions of ‘locating information’ and ‘proximity/profile data.’” PO Resp. 13. Patent Owner argues that proximity/profile data is distinct from locating information. Id. at 13–16. We agree with Patent Owner that locating information is distinct from proximity/profile data, but disagree that our construction conflates the two. According to the ’593 patent, in determining whether to send locating information, a central server evaluates profile data and proximity data to determine whether there is a match. Ex. 1007, 8:54–9:2. Locating information is not merely the profile and proximity data, nor is proximity/profile data sent to the mobile devices. Rather, the central server sends to a mobile device locating information that indicates to the mobile device that the profile and proximity data have been successfully matched. Id. at 9:3–8. Our construction of “locating information” is directed to the information transmitted by the central server, rather than the information received by the central server. As to reading the word “locating” out of “locating information,” Petitioner, in reliance on Dr. Heppe, argues that “information, sent as a consequence of a proximity test, is ‘locating information’ because information about a device’s proximity to known locations provides information about that device’s location.” Reply 3 (quoting Ex. 1014 ¶ 2). We credit Dr. Heppe’s testimony and agree with Petitioner. We conclude that our construction neither ignores “locating” nor conflates “locating information” with proximity/profile data.” slip op. at 12

  Patent outcomesUS 6,618,593 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,618,593
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAll claims unpatentable
  PTAB · Oct 21, 2015 · IPR2015-00336 · APJ David C Mckone · IPR · Final written decision

  Claims 1, 4, 7, 10, and 13–21 are unpatentable as obvious over Degnbol, with claim 15 also relying on DeLorme.

  RulingsFinal written decision

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

    “We agree with Petitioner that the Specification describes examples of “locating information” that indicates that a mobile device is within a certain proximity but without specifying a specific location. Indeed, in this Figure 5 embodiment (Ex. 1007, 14:22–32), the term “locating information” is used to describe information that is not usable to arrive at a specific location. We conclude that a construction excluding such embodiments would be unreasonably narrow. See Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred embodiment is rarely, if ever correct and would require highly persuasive evidentiary support.” (internal quotation marks and citation omitted)). We note that Patent Owner does not offer persuasive evidence that the Specification defines “locating information” or excludes or disavows locating information that is not usable to arrive at a specific location.” slip op. at 12

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

    “Neither party proposes a construction of “based upon the information defining the locations of the first and the second mobile communications devices.” Nevertheless, Patent Owner argues that “locating information” is further qualified by this claim language. PO Resp. 17. According to Patent Owner, in reliance on Mr. Zatkovich’s testimony, “[l]ocation information must include information about the locations of at least two devices.” Id. (citing Ex. 2017 ¶ 49). The plain language of the claims recites “based on,” rather than “includes.” Patent Owner does not persuasively argue that information “based on” the locations of two devices necessarily must include the two locations. Indeed, in the truck example Patent Owner cites (Id. at 6 (citing Ex. 1007, 11:46–57)), the information Patent Owner identifies as locating information is a transmission by the central server of a convenient meeting place, which, presumably, includes the location of neither truck. Mr. Zatkovich testifies that in instances such as textual directions and a video of the route to be travelled, “the ‘locating information’ is based on and derived from the locations of both devices.” Ex. 2017 ¶ 49. We agree. Nevertheless, information that indicates to a user that a second user is within a certain proximity of a first user also is based on and derived from the locations of both devices.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” We resolve the question of obviousness on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art;4 and (4) objective evidence of 3 At the oral hearing, Patent Owner admitted that it did not include in its Response any patentability argument distinguishing the prior art under its proposed construction of “user sending status.” Tr. 13:7–14:16. Instead, Patent Owner points to the testimony of Mr. Zatkovich, which Patent Owner admits is not cited in its Response. Id. (citing Ex. 2017 ¶¶ 81–89). Even if we were to adopt Patent Owner’s proposed construction of “user sending status,” Patent Owner has waived any patentability arguments based thereon, as they were not raised in the Response. See, e.g., Paper 27 (Scheduling Order), 2–3 (“The patent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 4 Petitioner, citing Dr. Heppe’s testimony, contends that a person of ordinary skill in the art “would typically have at least a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or equivalent thereof, and one to two years of experience in the field of computer communications, telecommunications, and/or communications networking.” Pet. 6 (citing Ex. 1005 ¶ 3). Patent Owner neither contends that this is incorrect nor proposes an alternative. On the full record, we adopt Petitioner’s statement of the level of skill in the art. nonobviousness, i.e., secondary considerations.5 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “communications device transmitting data defining its own location, these systems mentioned in Degnbol know the positions of the network’s cellular tower and use this information to derive the location of a communications device. To summarize, Degnbol’s cellular tower infers the location of communications devices.” Ex. 2017 ¶ 63. We understand Mr. Zatkovich to be testifying that Degnbol’s reference to “GPS” is a reference to the GPS coordinates of the cellular towers, rather than the GPS coordinates of the mobile telephones. Mr. Zatkovich does not cite to evidence other than Degnbol in reaching this conclusion. In reply, Dr. Heppe testifies, “a person of ordinary skill would understand Degnbol to teach (among other things) a ‘mobile-based’ position determination method with GPS receivers in (or associated with) the mobile devices.” Ex. 1014 ¶ 15. Dr. Heppe also relies exclusively on Degnbol’s disclosure in reaching his conclusion. Patent Owner argues that Degnbol has no explicit disclosure of mobile devices including GPS transceivers and that Degnbol’s distinction between “network-based” and “mobile-based” position calculation is “cryptic.” PO Resp. 27–28. The logical reading of Degnbol’s disclosure is that mobile- based methods, such as tracking a mobile phone’s position through receipt of GPS information from the phone, are distinct from “network-based” techniques, such as triangulation. See, e.g., Ex. 1003, 5:7–9 (“several determination methods, such as triangulation methods, GPS . . .”). As Dr. Heppe points out (Ex. 1014 ¶ 15), Figure 1 of Degnbol depicts a wireless network receiving “position reports” from users. To the extent there is any ambiguity, this is persuasive evidence that Degnbol’s cellular phones transmit information about their positions, such as GPS coordinates, to a central server. In consideration of all of this evidence, we find that Degnbol teaches first and second mobile communications devices “for transmitting information defining a location of” each device.” slip op. at 26

  Patent outcomesUS 6,618,593 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,618,593
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6

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

    “As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other

    “The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  Claim construction§ 102 anticipation
  Patents in suitUS 7,023,853

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.