- Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentablePTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision
The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.
RulingsFinal written decision- BurdenNot shown unpatentable
“prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable
“Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22
Patent outcomesUS 11,215,039 not shown unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · NautilusPatents in suitUS 11,215,039 - PTAB · Apr 13, 2023 · PGR2023-00003 · APJ William A Capp · PGR · Institution
The Board instituted PGR on claims 1–5 after finding claim 1 more likely than not anticipated by Davison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner alleges that Davison discloses each limitation of claim 1. Pet. 54–61. Petitioner recites each individual element of claim 1 in a subheading and then, beneath each such subheading, offers allegations as to how such recited element is satisfied by Davison. Id. Petitioner’s allegations are supported by citations to Davison and to Mr. Serra’s declaration (Ex. 1003). Id. Petitioner’s allegations are further supported by annotated drawings from Davison. Pet. 58. Having reviewed the Petition, the Davison reference, and Mr. Serra’s declaration, and further in light of the fact that QinetiQ has not filed a preliminary response in opposition to the Petition, it appears to us that Petitioner’s allegations have sufficient evidentiary support to warrant exercise of our discretion to institute a trial. Indeed, on this record, the steps of Davison’s iterative process quoted above sufficiently track the steps of the claimed process that no further explanation is required at this stage of the proceeding. IV. CONCLUSION Petitioner has shown that is more likely than not the that claim 1 is anticipated by Davison. Under prevailing law, a determination that any one claim is more likely than not unpatentable permits institution of a trial on all challenged claims. SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1356 (2018). We have not, however, made a final determination with respect to the patentability of any challenged claim or the construction of any claim term.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“In view of the foregoing and for purposes of this preliminary stage of the proceeding, we will construe the “optimized” term as relating to a hole shape associated with a known liner design that most closely approximates the desired hole shape in some objectively discernable manner when compared to hole shapes that are associated with other liner designs that are maintained in a library. Converge toward the desired hole shape” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“1 QinetiQ has filed a motion to dismiss the Petition. Paper 6. Dynaenergetics opposes the motion. Paper 7. We dispose of the motion to dismiss in a separate order issued substantially contemporaneously herewith.” slip op. at 2
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,215,039 - PTAB · Apr 3, 2023 · IPR2022-01605 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all asserted grounds, finding a reasonable likelihood that both claims would have been obvious over Schreibfeder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. 5 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Interim Procedure 9 (emphasis added); see also PO Sur-Reply 5 (acknowledging that Petitioner stipulated after the Patent Owner’s Preliminary Response was filed). Under the Interim Procedure, “the PTAB will not deny institution of an IPR . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). This is what Petitioner stipulates. Ex. 1021; see Reply 4 n.1 (stating that Petitioner is filing a “Sotera stipulation,” which “precludes discretionary denial” under the Interim Procedure); Sur-Reply 5. Accordingly, we decline to deny institution under Fintiv.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under Section 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Turning to the first prong of Advanced Bionics, neither Schreibfeder nor Threlkel was cited during prosecution of the ’028 patent. See Ex. 1002; see also Ex. 1001, code (56). Further, we do not find anything in the prosecution history of the ’028 patent, such as an office action on the merits, that suggests the Examiner considered “the same or substantially the same prior art” as these references. See Ex. 1002. We disagree with Patent Owner that the Examiner considered “the same prior art” simply because Schreibfeder or Threlkel may have fallen within the same classes searched by the Examiner. See Sur-Reply 3. We are aware of no authority, and Patent Owner cites none, to support this position. Because we do not find that the same or substantially the same art or” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a minimum of a B.S. in engineering or a related field, as well as four to six years of industry experience designing or building amusement rides or motion simulator systems. Higher education by way of advanced degrees in a related field could substitute for years of experience. Pet. 6 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute Petitioner’s definition of a POSITA. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as we find that it is consistent with the ’028 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“controller” “should be construed as ‘one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.’” Pet. 7 (citing Ex. 1020). Patent Owner similarly proposes that the term “controller” should be construed as “one or more computer-based devices that issue control signals to engage and control the projector, the motor system, and actuator system.” See Prelim. Resp. 12. As both parties propose identical interpretations of the term “controller” (compare Pet. 7, with Prelim. Resp. 2), and Patent Owner at this time does not dispute that the asserted prior art (Schreibfeder) teaches the recited “controller,” this term is not in controversy, and we do not construe it in this Decision. See infra Section III.E.3.h; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,266,028 - Nokia Of America Corporation v. Blackberry Ltd.Rehearing deniedPTAB · Oct 19, 2018 · IPR2018-00583 · APJ Aaron W Moore · IPR · Rehearing
The Board denied Nokia’s rehearing request, leaving institution denied for claims 5–17 because Cherian did not disclose the claimed antenna configuration information for the second or third component carrier.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Because Petitioner has not shown that we abused our discretion in denying institution, the Request for Rehearing is denied. 1 37 C.F.R. § 42.108(c) provides that “a genuine issue of material fact created by . . . testimonial evidence will be viewed in the light most favorable to the petitioner . . . for purposes of deciding whether to institute an inter partes review.” This does not require that we institute whenever there is conflicting testimony, or that every fact issue be resolved in the petitioner’s favor. We only need view the issue in the light most favorable to the petitioner. We did so here.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“. . . to ‘the number of Nxcarriers,’ constituting the number of data traffic channels” and that “[e]ach different channel . . . requires . . . a separate antenna port.” Ex. 1008 ¶ 85. This means that the NxParamsCount field would reflect the number of antennas/ports used for all data channels, not “antenna configuration for the second component carrier,” as recited in claims 1 and 14, or “antenna configuration for the third component carrier,” as recited in claim 14. For example, if there were four data channels, the NxParamsCount field would be set to four, even though, according to Dr. Min, the “second component carrier” and “third component carrier” would each have only one antenna. There is no genuine issue of fact warranting institution because we find Petitioner’s evidence insufficient even if we accept it as true.1 IV. CONCLUSION We denied institution because we found Petitioner failed to show how Cherian’s NxParamsCount value discloses “antenna configuration information”––including a number of ports/antennas––for “the second component carrier” or the “third component carrier.” Further review of the Petition and the Min Declaration, in light of Petitioner’s Rehearing Request, does not lead us to a different conclusion.” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that Cherian does not disclose each and every element arranged as recited in the claim, as required for anticipation. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“ports” from the broadest reasonable interpretation of “antenna configuration,” “misapprehended or overlooked Nokia’s arguments that an ‘antenna configuration’—i.e., ‘information regarding how the antenna is configured’—encompasses a number of antenna ports,” and “[i]n particular, . . . misapprehended or overlooked Nokia’s presentation of the ’772 Patent’s specification, which states that a number of antenna ports constitutes an ‘antenna configuration.’” Req. Reh’g 1–2, 6. We did not, however, exclude the number of ports from the broadest reasonable interpretation of “antenna configuration.” Instead, we found that, “[b]y Petitioner’s own admission, what is included in the NxParamsCount field is ‘the number of Nxcarriers,’ not antenna configuration information.” Decision 10. In other words, the skilled artisan would have understood––again, as Nokia acknowledges––that the NxParamsCount field specifies the number of carriers, not information about the antenna configuration information, including a number of antennas or ports. We further found “[t]he fact that the number of channels might be used to glean information about the number of antennas does not mean that the message includes ‘information regarding how the antenna is configured,’” even if the number of antennas happens to be the same as the number of channels, as Nokia alleges. Id. Because the field identifies the number of carriers, not a number of antennas or ports, we concluded that” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 9,253,772 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentablePTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision
Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10
- ExcludeOther
“Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78
Patent outcomesUS 8,923,941 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,923,941 - PTAB · Jul 26, 2018 · IPR2017-01903 · APJ Kamran Jivani · IPR · Rehearing
The Board denied Power Integrations’ rehearing request, leaving institution denied because it did not show Mammano and the SMP3 Datasheet were publicly accessible printed publications.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 9 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 9 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
- BurdenDecided for patent owner
“Reh’g Req. 13–14. Although we did not require that Petitioner show “every possible detail,” we did require Petitioner to make a threshold showing. In finding that Petitioner failed to make the necessary threshold showing, we applied the standard clearly set forth by our reviewing court in Blue Calypso, Kyocera Wireless, and SRI International to Petitioner’s arguments and evidence. Inst. Dec. 9. A request for rehearing is not an opportunity to reargue positions, elaborate on previous positions, or to disagree with the analysis or conclusions of the panel. See Nestlé Purina Petcare Co. v. Oil-Dri Corp. of Amer., Case IPR2015-00737, slip op. at 8 (PTAB Feb. 9, 2017) (Paper 39) (“Merely disagreeing with our analysis or conclusions does not serve as a proper basis for a request for rehearing.”).” slip op. at 10
§ 102 anticipation - EMC Corporation v. Actividentity, Inc.All claims unpatentablePTAB · Jul 2, 2018 · IPR2017-00338 · APJ Kevin C Trock · IPR · Final written decision
Claims 1, 3, 5, 7–9, 11, 13, 15, 16, and 19 are unpatentable as anticipated by Wood and obvious over Wood combined with Neuman IETF.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Exclusive Licensee’s Response does not appear to identify or provide any assessment of the level of skill possessed by an ordinary artisan in the field of the claimed invention at the time of filing. Exclusive Licensee’s declarant, Dr. David Goldschlag, however, testifies that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent field with three or four years of academic or industry experience in communications. This assessment would include a person with a master’s degree in the aforementioned fields with coursework in computer network security and one or two years of experience in communications. Ex. 2007 ¶ 20. We find that a person of ordinary skill in the art in the field of the ’685 patent is a person who has a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field and 3–4 years of professional or academic experience in computer systems, network security, or network communications, or a master’s or doctorate degree and 1–2 years of professional experience in computer systems, network security, or network communications, or equivalent academic experience. C. Prior Art References and Alleged Grounds of Unpatentability” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’685 patent does not define expressly the term “security policy.” Petitioner’s proffered construction, that a “security policy” is “rules specifying conditions for accessing a secure resource,” is generally consistent with the use of the term in the Specification, including the claims. For example, the Specification explains “[i]n dependence upon the security policy . . . an authorization method . . . is selected.” Ex. 1001, 7:50–54. The Specification also explains, “the authorization method is varied because a security policy . . . is different.” Id. at 6:3–7. The Specification provides some examples of the parameters or conditions that a security policy considers. For instance, a security policy may consider the requested time of access, and may indicate that no access is provided between the hours of midnight and 6:00 a.m. Ex. 1001, 7:55–58. The Specification indicates that a security policy may vary based on the location of the user requesting access. Id. at 9:55–62. The Specification also indicates a security policy may require the use of different user authentication devices. Id. at 8:23–45, 9:8–15, 9:28–37; Ex. 1002 ¶ 42. Therefore, we determine that the broadest reasonable interpretation of the claim term “security policy” consistent with its use in the ’685 patent is “a rule or set of rules specifying conditions for accessing a secure resource.”” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Exclusive Licensee’s arguments, however, are unavailing. Wood’s Figure 4 and the accompanying text demonstrate that Wood discloses recording (encoding) the received user identification data. Figure 4 of Wood, shown below, illustrates relations between login credentials, session credentials and a cookie encoding of a session token. Ex. 1011, 4:15–16. Figure 4 of Wood shown above, annotated by Petitioner, shows the encoding of login credentials. As Wood explains, [t]ypically, login credentials encoded in login credentials structure 410 are obtained from a principal via browser client and serve as evidence that the principal (e.g., a human user) is entitled to a particular identity. Accordingly, login credentials structure 410 encodes a userId and a domainId within which the userId should uniquely correspond to a principal. Specific login credentials, e.g., a password, a certificate, results of a biometric process, a response to an Enigma challenge or results of a smart card interrogation, etc. are encoded in login credentials structure 410, as a tagged value. . . . Of note, principal ids, authorizations and other contents encoded in the session credential may be read by components of the security architecture, . . . security architectures employing facilities described herein ensure that information contained in the session credential is provably constant once set by an authentication service. . . . . . . . Referring again to session credentials structure 420, a session id, a principal id, a trust level, group ids, a creation time and an expiration time are encoded in both in encrypted portion 421 and clear text portion 422. The session id is a unique identifier for a persistent session maintained by the security architecture. . . . Principal id encodes an identifier for a principal to which the security architecture has resolved login credentials. For example, a login credential including a username jdoe and a password corresponding to jdoe may be resolved by the security architecture to a unique principal id associated with John. Q. Doe of the shipping and receiving department, having an employee badge number of 12345, etc.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Exclusive Licensee appears to conflate Petitioner’s arguments. Petitioner first argues that it would have required no more than routine skill in the art to combine the teachings of Wood and Neuman IETF, because Neuman IETF’s framework was designed expressly to be adapted for integration with many different types of systems for authorizing users to access resources. Pet. 62. Petitioner then argues that a person of ordinary skill would have had reason to do so because he would have readily recognized that the risk associated with access requests differ with time, location, and/or type of communication link. Id. at 65. Petitioner argues that a person of ordinary skill would have understood that by taking these factors into account, an access control system can achieve more fine-grained access control that can be tailored according to different circumstances. Id. Petitioner points out that Wood describes such a rationale. Id. (citing Ex. 1011, 2:49–55; Ex. 1002 ¶ 154). Petitioner, therefore, provides a rational basis to combine Wood and Neuman IETF along with sufficient reason to do so. Whether Neuman IETF expressly uses the word “risk” is of no moment, as long as a person of ordinary skill in the art would have appreciated the benefits of combining the teachings of Wood and Neuman IETF and would have had reason and the ability to do so. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). d. Conclusion on Claims 1, 9, and 19 We find, on the basis of the evidence and explanation provided by Petitioner, that the combination of Wood and Neuman IETF teaches or suggests the recited limitation “determining a security policy from a plurality of predetermined security policies based on previously stored policy data and the received indication of the type of communication link between the workstation and the security server, the geographic location of the workstation, or the time of access of the workstation” of independent claim 1, and similarly recited limitations of independent claims 9 and 19. For the reasons stated above, we are persuaded that Petitioner has shown by a preponderance of the evidence that the combination of the teachings of Wood and Neuman IETF teaches or suggests all of the limitations recited by independent claims 1, 9, and 19 and that a person of ordinary skill in the art at the time of invention would have had reason to combine the teachings of the references.” slip op. at 43
Patent outcomesUS 9,098,685 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,098,685 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.All claims unpatentablePTAB · Jun 5, 2018 · IPR2017-00321 · APJ James B Arpin · IPR · Final written decision
Claims 14–21 are unpatentable as obvious; the Board denied the contingent motion to amend substitute claims 22–29.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“review of claims 14–21 (“the challenged claims”) of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311– 319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes review as to the challenged claims.2 Paper 11 (“Inst. Dec.”). Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition (IPR2017-01556, Paper 2), accompanied by a Motion for Joinder (IPR2017-01556, Paper 3), challenging claims 14–21 of the ’941 patent, and we granted the Motion for Joinder and instituted review of the challenged claims based on the corresponding Petition (IPR2017-01556, Paper 9).” slip op. at 2
- BurdenFwd all claims unpatentableUnpatentable
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved 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;5 and (4), when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.6 Graham v. 5 Petitioner proposes an assessment of the level of ordinary skill in the art. Pet. 11; see Ex. 1003 ¶ 54. Petitioner’s declarant, Dr. Sarrafzadeh, and Patent Owner’s declarant, Dr. Pollonini, exceeds this assessed level. Ex. 1004; Ex. 2010 ¶¶ 6–11. Patent Owner does not contest Petitioner’s assessment or propose an alternative assessment. See MTA 11. To the extent necessary, we adopt Petitioner’s assessment. 6 In the instituted proceeding, Patent Owner does not raise arguments or present evidence based on the presence of such objective evidence of nonobviousness. See In re Applied Materials, 692 F.3d 1289, 1299 (Fed. Cir. 2012) (“The party seeking the patent bears the burden to overcome the prima facie case of obviousness with evidence of secondary considerations, such as commercial success.”); Medtronic, Inc. v. Nuvasive, Inc., Case IPR2014-00087, 2015 WL 1546574, at *11 (PTAB 2015) (“Although it is Patent Owner's burden to introduce evidence supporting such objective indicia, see In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996), the ultimate burden of persuasion never shifts to Patent Owner, see 35 U.S.C. § 316(e).”), aff’d, In re Nuvasive, Inc., 689 Fed. Appx. 954 (Fed. Cir. 2017); but see Prelim. Resp. 4–6. Therefore, this factor does not play into our analysis of Petitioner’s challenges to any claim on any ground. John Deere Co., 383 U.S. 1, 17–18 (1966). Nevertheless, the Supreme Court cautions us against “the temptation to read into the prior art the teachings of the invention in issue.” Graham, 383 U.S. at 36.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“6. “PPG sensor” (claims 14–21) In the Institution Decision, we adopted Patent Owner’s proposed construction of the term “PPG sensor” as the broadest reasonable interpretation of the term. Id. at 10–11. In the Patent Owner Response, Patent Owner proposes a slight modification to this interpretation (PO Resp. 9), to which Petitioner does not object (see Reply 1–4). Patent Owner now contends that the broadest reasonable interpretation of the term “PPG sensor” is “an optical sensor which obtains a plethysmogram that results from blood flow modulations caused by the subject’s heartbeat.” PO Resp. 9 (emphasis added); see Ex. 2005, 1. We agree that the term should include express reference to “an optical sensor,” rather than merely to “an optically obtained plethysmogram.” Inst. Dec. 10; see Ex. 1001, 1:64–2:6. We determine that our previous construction, as modified by Patent Owner, is the broadest reasonable interpretation of this term.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“have had reason to combine the teachings of Kosuda and Maekawa in the manner proffered by Petitioner. Initially, we note that although Patent Owner has suggested an alternative solution to the signal-to-noise problem, neither Patent Owner nor its declarant provides support for their contention that the alternative solution is superior to that taught by the combination of the teachings of Kosuda and Maekawa. See PO Resp. 24; Ex. 2010 ¶ 90. But even if it had, as Petitioner notes, “the law does not require that a particular combination be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the claimed invention.” Reply 8; see In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“The question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” (emphasis added)). Thus, the existence of potentially superior alternatives does not negate the combination of teachings proposed by Petitioner. Accordingly, we are persuaded that Petitioner demonstrates sufficiently that a person of ordinary skill in the art would have had reason for combining the teachings of Kosuda and Maekawa to achieve the device recited in claim 14 of the ’941 patent.” slip op. at 29
Patent outcomesUS 8,923,941 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,923,941 - Inauth, Inc. v. Msignia, Inc.Institution deniedPTAB · May 10, 2018 · IPR2018-00150 · APJ James B Arpin · IPR · Institution
The Board denied institution on claims 1–25 because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner and Patent Owner agree that only the term: “generating a challenge” recited in each independent claim requires express construction. Pet. 13; Prelim. Resp. 4–5; see Paper 11. Moreover, Petitioner and Patent Owner agree that “generating a challenge” should be construed as “generating a request for information.” Pet. 13; Prelim. Resp. 4. Nevertheless, Patent Owner further clarifies that the “challenge” is a challenge to the computer that is to be authenticated. Prelim. Resp. 4. We believe that this clarification is apparent from the context in which the construed term is used in the independent claims. See Pet. 13 (“As used in the specification, the challenge is a request to the computer to provide information based on selected minutia.”). On this record and for purposes of this Decision, we adopt the parties’ agreed upon construction, in view of Patent Owner’s clarification that the challenge is to the computer seeking authentication, as the broadest reasonable interpretation of this term.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” Application of Preda, 401 F.2d 825, 826 (CCPA 1968). Nevertheless, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed, and thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455 F.2d 586 (CCPA 1972). slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success
“With respect to Claims 1, 24, and 25, to the extent Patent Owner contends that Etchegoyen does not anticipate because it does not disclose a single embodiment that uses both the request/response protocol (i.e., challenge/response protocol) to obtain a fingerprint and the typical-upgrade ratio to analyze the fingerprint, it would have been obvious to a [person of ordinary skill in the art] to modify the embodiments disclosed to include both aspects. Id. at 37 (citing Ex. 1003 ¶ 151). Patent Owner contends, however, that Etchegoyen fails to disclose the limitations of claim 1 relating to “anticipated changes” including “storing information associated with one or more identities, wherein the information stored for an identity includes (a) data values associated with that identity; and (b) information regarding anticipated changes to one or more of the stored data values associated with that identity” and “determining whether the response is allowable, wherein such determining comprises using the stored information regarding anticipated changes to the stored data values associated with the identity to determine whether a data value used to form the response is based on an acceptable change to a corresponding stored data value.” Prelim. Resp. 7– 11. For the reasons discussed below, we are not persuaded that Petitioner has shown a reasonable likelihood of prevailing in its assertion that Etchegoyen discloses each and every element or teaches or suggests all of the limitations recited in independent claims 1, 24, and 25.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,559,852 - PTAB · Apr 30, 2018 · IPR2017-01904 · APJ James B Arpin · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that Mammano was a printed publication or that the Board misapprehended or overlooked evidence.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply. (Emphasis added.) See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” Inst. Dec. 8 (quoting 35 U.S.C. § 311(b) (emphasis added)); see 37 C.F.R. § 42.104(b)(2). Petitioner had the burden to establish in its Petition a reasonable likelihood of success, including, among other things, making a threshold showing that Mammano is a “printed publication” within the meaning of 35 U.S.C. §§ 102(b) and 311(b). Inst. Dec. 9 (citing 35 U.S.C. § 314(a)); see 37 C.F.R. § 42.108(c); Apple, Inc. v. DSS Tech. Mgmt., Inc.,” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As we explained in the Institution Decision, “‘[p]ublic accessibility’ is the touchstone in determining whether a reference is a ‘printed publication.’” Inst. Dec. 10 (citing In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)); see, e.g., L-3 Commc’n. Holdings, Inc. v. Power Survey, LLC, Case IPR2014- 00832, slip op. at 11–12 (PTAB Nov. 14, 2014) (Paper 9) (applied reference not shown to be publicly accessible); C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2014-00727, slip op. at 20–22 (PTAB Oct. 29, 2014) (Paper 15) (applied reference shown to be publicly accessible). Consequently, “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”’ Inst. Dec. 10–11 (emphasis added) (citing Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008) (quoting SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008))). The status of a reference as a printed publication is a legal conclusion “based on underlying factual determinations.” Blue Calypso, 815 F.3d at 1348 (citing In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)).” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“we should find that Mammano is a printed publication consistent with the requirements of In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Reh’g Req. 10; see id. at 7–10. We decline to draw now the conclusions argued for the first time in this Request for Rehearing. A request for rehearing is not an opportunity for the requestor to present new arguments or evidence. It goes without saying that we could not have overlooked or misapprehended arguments that Petitioner did not make, and it is not an abuse of discretion not to consider such arguments. Thus, Petitioner’s submission of new arguments and evidence in its Request for Rehearing is both improper and unpersuasive.” slip op. at 7
§ 102 anticipation
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.