• Dropbox, Inc.Instituted
  PTAB · Jul 25, 2024 · IPR2024-00287 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR on claims 9–16 and 22–24, finding a reasonable likelihood that claims 9, 10, 14, and 15 are obvious over Riepling and Meisels, and claims 11–13, 16, and 22–24 over Riepling, Manzano, …

  RulingsInstitution decision

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

    “The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any Preliminary Response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 3–4 (citing Mowry Decl. ¶ 29). Patent Owner does not 8 No evidence of objective indicia of non-obviousness is of record concerning the challenged claims. dispute Petitioner’s definition for purposes of its preliminary response. Prelim. Resp. 22. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 15

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

    “Petitioner argues that this combination would have been motivated because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) that the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) that the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; (iv) and that the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Patent Owner does not specifically address Petitioner’s arguments regarding the combination of Riepling and Meisels. See Prelim. Resp. 38. At this stage, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Riepling and Meisels.” slip op. at 23

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not specifically address Petitioner’s arguments regarding the combination of Riepling and Meisels. See Prelim. Resp. 38. At this stage, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Riepling and Meisels.” slip op. at 23

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Dropbox, Inc. v. Motion Offense, LLCInstituted
  PTAB · Jul 25, 2024 · IPR2024-00286 · APJ Norman H Beamer · IPR · Institution

  The Board instituted IPR of claims 17–21 on all petitioned grounds, finding a reasonable likelihood that Houston and Garcia render at least one challenged claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “Thus, Patent Owner has shown that the first part of the Advanced Bionics framework is satisfied. Turning to the second part of the Advanced Bionics framework, we determine that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. As Petitioner argues, there is no evidence that the references in question were meaningfully addressed during the prosecution of the ’520 patent — there was no evaluation of the art or articulation regarding any arguments applying that art. Pet. 11. We note that the IPR petitions were submitted only after the prosecution came to a purported end with an Issue Notification — submission of the petitions briefly postponed issuance, but resulted in no further substantive actions other than a later issuance.” slip op. at 15

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

    “Accordingly, notwithstanding Patent Owner’s specific arguments directed to claim requirement 17[e], and its arguments discussed above generally relating to all of Petitioner’s grounds, for the reasons discussed above, for purposes of this Decision, we are persuaded that the record sufficiently supports Petitioner’s arguments regarding claim requirements 17[e] and 17[f]. d) Conclusion Regarding Claim 17 Based on our analysis set forth above, including our analysis of Patent Owner’s arguments regarding secondary considerations of nonobviousness, we determine, on the current record and for purposes of this Decision, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner will prevail in establishing that claim 17 is unpatentable under 35 U.S.C. § 103(a) over the combination of Houston and Garcia.” slip op. at 45

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the earliest claimed priority date of the ’520 patent (September 22, 2012): would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer science, or a related field and two or more years of experience in a related field such as networked computer systems using Internet protocols. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 3–4 (citing Mowry Decl. ¶ 29). Patent Owner does not dispute Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 17. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11

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

    “Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Pet. 40–41; Ex. 2045. Thus, Patent Owner’s argument, that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared, is not applicable to Petitioner’s challenges of claim 17–21. The fact that the Houston system ensures the availability of synchronized local copies of files at each user and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, nothing about that particular difference in the approaches of Houston and Garcia would have discouraged one of ordinary skill in the art from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d at 425; In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). At this stage, we are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have been motivated to apply the email and folder interface teachings of Garcia to modify Houston. Mowry Decl. ¶¶ 84–93, 102–104, 148, 151–152. Accordingly, for purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Houston and Garcia.” slip op. at 35

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Scoda did not disclose the claimed interception limitation and Hallak did not disclose execution of the removed script after removal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 10

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

    “We find that the parties’ agreed upon construction is supported by the record before us and apply it in our patentability analysis below, requiring the embedded script to be removed before that script is executed. We determine that no other claim terms require express construction.” slip op. at 12

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

    “during trial, we determine that Petitioner has not shown by a preponderance of the evidence that Scoda discloses intercepting a web page sent from a We agree with Patent Owner that portions of Scoda cited in the Petition do not disclose a web page, let alone one sent from a server and addressed to a client browser. See PO Resp. 17; Tr. 73:10–23. Scoda discloses that “[t]he core module 21 is executed by the web content proxy server 12 to determine where to provide the response with the executed JavaScript functionality in the exemplary environment 10, such as to a web browser on one of the client devices 14(1)–14(n).” Ex. 1016 ¶ 55. But this functionality does not refer to a web page from a server. Instead, this discussion is about a HTTP request that comes from a client device and may include one or more hidden JavaScript identifiers. See id. ¶¶ 50–55. The discussion about providing a response to a web browser on a client device refers to a response to the client device’s HTTP request, in the form of an error message, that is sent from the proxy server to client device. Id. ¶ 58. As Patent Owner points out, this is one of the two scenarios presented in Scoda, the other one being that HTTP request is sent to the server. Id.; PO Resp. 36; see also Ex. 2009 ¶ 70. We agree with Patent Owner and Dr. Almeroth that these communications between the client and proxy server or the proxy server and the content server do not disclose the “intercepting” limitation.” slip op. at 19

  • Strike new argumentNew argument disregardedDenied

    “deficient, Petitioner attempts to change the focus of its argument. Pet. Reply 2–3. Petitioner instead relies on Figure 8 and related discussion as “Scoda’s disclosure of proxy server 12 processing a web page that was sent from a web server.” Id. Scoda, and Petitioner’s argument based on this disclosure is, therefore, an untimely new argument presented in the Reply. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 20

  Patent outcomesUS 9,516,091 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · Graham
  Patents in suitUS 9,516,091
• Nearmap US, Inc. v. Eagle View Technologies, Inc.All claims unpatentable
  PTAB · Jul 15, 2024 · IPR2022-00734 · APJ Garth D Baer · IPR · Remand

  On remand, the Board held claims 1, 6, 7, 9, 10, 16, 17, 25, 26, and 34 unpatentable as obvious over Heller and Quam, and over Heller, Quam, and Deaton.

  RulingsRemand decision

  • RemandOther

    “After our Final Written Decision (Paper 41) found no challenged claims unpatentable, the Director vacated our Decision and remanded the case back to the Board. Paper 43. With our authorization, Petitioner and Patent Owner filed Briefs on Remand. Paper 45 (“Pet. Remand Br.”), Paper 48 (“PO Remand Br.”). We have jurisdiction under 35 U.S.C. § 6. This decision is a Final Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we discuss below, we determine that Petitioner has proven by a preponderance of the evidence that the challenged claims are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ’737 patent “would have had at least a Bachelor’s Degree in an academic area emphasizing the design of electrical, computer, or software technologies, or a similar discipline, and at least two years of experience related to computerized image analysis and three-dimensional modeling.” Pet. 4–5. 1 Because the parties agree that the challenged claims of the challenged patent have an effective filing date before March 16, 2013, we apply the pre- AIA (“America Invents Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). 2 Heller, “The Site-Model Construction Component of the RADIUS Testbed System,” in Proceedings: ARPA Image Understanding Workshop (1997) (Ex. 1004, “Heller”). 3 Quam, “The Radius Common Development Environment,” in RADIUS: Image Understanding for Imagery Intelligence (1997) (Ex. 1005, “Quam”). 4 U.S. 2006/0235611 A1, Pub. Oct. 19, 2006 (Ex. 1006, “Deaton”). Further, “education could compensate for a deficiency in work experience, and vice-versa.” Id. at 5. Patent Owner does not provide a formulation for a person of ordinary skill. We adopt Petitioner’s description as it is consistent with the prior art and patent specification before us and supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5

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

    “Petitioner asserts that “this limitation should be interpreted broadly enough to encompass transmitting roof measurement information between components of the same computer system,” Pet. 11, whereas Patent Owner contends this limitation requires “transmitting the roof measurement information outside the roof estimate report system . . . such as to third-party systems.” PO Resp. 18. We agree with and adopt Petitioner’s construction. As we explained in IPR2016-00592, “[t]he claim term at issue requires only ‘transmit[ting]’ roof measurement information—it does not specify any particular source or destination for the transmission.” Ex. 1010, 20. In addition, the ’737 patent’s specification states that “the roof [report] generation engine 813 may transmit roof measurement information” and “some portion of the contents . . . of the [Roof Estimation System] 810,” which includes roof report generation engine 813, “may be stored on and/or transmitted over the other computer readable media 805.” Ex. 1001, 17:16–17, 16:13–17 (emphasis added), Fig. 8. Thus, because the ’737 patent’s specification expressly recognizes transmitting roof-estimate content between components of the same computer system, we maintain our construction from IPR2016-00592— that “transmission” includes transmission within the same system. See Ex. 1010, 20.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “The at-issue language appears in preambles, which as a general rule are not limiting unless they are “necessary to give life, meaning and vitality to the claim.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (internal quotation marks omitted). Because claims 16 and 26 describe structurally complete inventions without their preambles, we find the preambles not limiting. In addition, even if the preambles were limiting, the Petition’s analysis, along with Dr. Forsyth’s supporting declaration, plainly indicate that the Heller-Quam RADIUS system includes these generic computing features because RADIUS is a software platform executed by a processor on a computer that utilizes memory. See, e.g., Pet. 20 (explaining that RADIUS is a “workstation-based image processing system,” that “runs on both SunMicrosystems and Silicon Graphics RISC-based workstations,” “utilizes ‘memory,’” and “comprises over 200,000 lines [of code]”); see also Ex. 1041 ¶¶ 36, 38–40. Thus, we agree with Petitioner that the Heller-Quam system teaches the preambles in claims 16 and 26.” slip op. at 11

  Patent outcomesUS 9,135,737 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,135,737
• Datavant, Inc. v. Vigilytics LLCInstituted
  PTAB · Jul 12, 2024 · IPR2024-00381 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR of claims 1–20 on all petition challenges after finding a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’012 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking, and/or data records management.” Pet. 8. Petitioner also asserts that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. Dr. Clark’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 23. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’012 patent as well as the asserted references.” slip op. at 13

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

    “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor 4 For Exhibit 1010 (Plaintiffs’ Opening Claim Construction Brief), we cite to the page numbers of the brief rather than the header page numbers. Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Alleged Reason to Combine the Teachings of the References Petitioner identifies a reason that would have prompted an ordinarily skilled artisan to combine Murphy’s teachings with Evenhaim’s teachings in the way Petitioner proposes, i.e., to provide “additional details about how to beneficially implement statistical de-identification.” See Pet. 15–16. Further, Petitioner asserts that an ordinarily skilled artisan would have had a “reasonable expectation of success” in combining the teachings of the references. Id. at 16. Dr. Clark’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 68–70. For instance, Dr. Clark testifies that Murphy describes “measures [that] would prevent a search for a single subject in Evenhaim to result in the identification of the subject’s medical records” and, therefore, “reduc[e] the risk of a HIPAA violation.” Id. ¶ 68. According to Dr. Clark, Murphy does so by recommending: (1) “at least a minimum amount of de-identified medical data (i.e., multiple patient records) such that the query complies with the HIPAA statistical requirements”; and (2) “maintaining a log of queries to ensure that a user does not repeatedly submit a query that returns the same number of results multiple times within a defined time period.” Id. Based on the current record, Petitioner establishes sufficiently that an” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,886,012
• Datavant, Inc. v. Vigilytics LLCInstituted
  PTAB · Jul 12, 2024 · IPR2024-00382 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on all three asserted obviousness grounds.

  RulingsInstitution decision

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

    “Pet.”), to institute an inter partes review (“IPR”) of claims 1–22 (the “challenged claims”) of U.S. Patent No. 9,665,685 B1 (“the ’685 patent”). 35 U.S.C. § 311 (2018). Vigilytics LLC (“Patent Owner”) did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 6. An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “VII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 8 (citing Ex. 1003, Clark Decl. ¶¶ 20–25). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶¶ 20–25). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. The ’685 patent issued from a continuation application filed on April 22, 2016 (Ex. 1001, code (22)) and claims priority under 35 U.S.C. § 120 to an application filed on June 30, 2010. Id. at code (63), 1:7–20. We apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 4 U.S. Pat. Appl. Publ. No. US2002/0111833 (Ex. 1007) 5 U.S. Pat. No. 7,519,591 (Ex. 1008) 6 Shawn N. Murphy & Henry C. Chueh, A Security Architecture for Query Tools Used to Access Large Biomedical Databases, 2002 AMIA Annual Symposium Proceedings, 552–56 (2002) (Ex. 1009). we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’685 patent and the references.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “2. Petitioner’s Contentions Concerning Motivation to Combine the Teachings of Evenhaim and Settimi Petitioner notes that, where Evenhaim sends healthcare data queries to various healthcare organizations, Settimi consolidates the information from various providers in a central repository for queries. Pet. 39 (citing Ex. 1005, 15:15–24, 16:5–21, Fig. 4; Ex. 1006, Figs. 1–2, ¶ 27; Ex. 1003, Clark Decl. ¶ 132). According to Petitioner, Settimi’s repository eliminates the need for conducting searches across different entities and uses a “common vocabulary” that make searching easier and more reliable. Id. (citing Ex. 1006 ¶¶ 9, 60–62; Ex. 1003, Clark Decl. ¶ 131). Petitioner further cites Settimi as disclosing generating encoded patient identifiers (EPIDs) for individuals, i.e., encrypted tokens, based, e.g., on a patient’s name or Social Security number, and querying the repository to obtain records without revealing the patient’s identity. Id. at 38 (citing Ex. 1006 ¶¶ 37–43; Ex. 1003, Clark Decl. ¶¶ 51–52, 130–131). According to Petitioner, a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Settimi to simplify search vocabulary, while still allowing for searches for specific patients. Id. at 39 (citing Ex. 1006 ¶¶ 9, 14, 17, 27, 39–40; Ex. 1003, Clark Decl. ¶¶ 131–132). For purposes of this Decision, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to apply the teachings of Evenhaim to a central repository, as disclosed in Settimi.” slip op. at 24

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,665,685
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–5 were not proven unpatentable: Athas does not show the same packets are received, modified, and forwarded; neither obviousness combination teaches execution in response to the client’s execution of the second script.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). For our Institution Decision, we adopted Petitioner’s formulation. Institution Dec. 11. Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’s explanation,” he bases his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Final Written Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner 6 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. and used previously in our Institution Decision. We find that this formulation is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12.” slip op. at 23

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

    “as “the number of packets” intercepted in limitation 1a (see PO Resp. 6–7). Petitioner responds that resolving this argument is not necessary. Pet. Reply 1. We find that whether claim 1 requires the packets intercepted by the network appliance in limitation 1a to be the same packets involved in limitations 1b–1d, Petitioner has not persuasively shown that any same number of packets in Athas that are received at proxy platform 101 are then modified and forwarded as required by limitations 1b–1d, for the reasons discussed below. We agree with Patent Owner that the number of packets in limitations 1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  • BurdenNot shown unpatentable

    “1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  Patent outcomesUS 8,924,457 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,924,457
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–19 were not proven unpatentable; the Board found the asserted WebShield and Hallak grounds failed on script-removal and execution sequencing, and the Kothari combination lacked motivation.

  RulingsFinal written decision

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

    “Post-institution, Patent Owner proposes two claim constructions. PO Resp. 7–8. Patent Owner proposes that we construe the term “embedded script,” as defined in the ’498 patent, as “a script that is included or incorporated by reference into a markup language description of a web page and executable by a browser rendering that web page.” Id. at 8 (citing Ex. 1001, 3:23–26). According to Patent Owner, a “script” is “a sequence of machine-readable instructions.” Id. (citing Ex. 1001, 3:21–23). Patent Owner proposes that we construe “executing . . . the removed embedded script” as requiring the removal of the script embedded in the web page to take place before the script is executed. Id. This limitation is recited in claim 1 and in each of the other independent claims. Ex. 1001, 11:43–46 (claim 1), 12:17–20 (claim 10); 12:58–63 (claim 19). Petitioner responds that “[t]hese claim terms have already been construed by the district court and those constructions are not disputed in this proceeding.” Pet. Reply 2. We find that these undisputed constructions are supported by the record before us. We, therefore, adopt them for this Decision. We do not find it necessary to expressly construe any other terms for this Decision.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’ explanation,” he bases 7 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

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

    “We agree that Petitioner’s citations to WebShield do not disclose the sequence of operations called for by the claims. WebShield expressly states that “the HTML page, embedded JavaScript files and embedded CSS files will be parsed and executed to create the DOM data structures of the webpage.” Ex. 1008, 5 (emphasis added). As Dr. Almeroth explains, “WebShield does not remove an embedded script and then subsequently execute the removed embedded script. . . . WebShield . . . executes the embedded JavaScript without first removing that JavaScript from the web page, and only subsequently generates ‘the new HTML page [that WebShield] transfers to the client browser T(R).’” Almeroth Decl. ¶ 78 (quoting Ex. 1008, 6) (final alteration in original). We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

  Patent outcomesUS 9,503,498 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,503,498
• Netskope, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · Jul 9, 2024 · IPR2023-00456 · APJ James P Calve · IPR · Final written decision

  Claims 1–28 are unpatentable under § 103 over Burdett and FortiSandbox, Sharpe, Seese, and Kamalapuram, or Sharpe, Seese, Kamalapuram, and Dods.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan “would have had at least a B.S. in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 14–15. Patent Owner asserts that its proposal is almost the same as Petitioner’s, and its positions would be the same under either party’s proposal. See id. at 15. The two formulations differ mainly in the levels of experience. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and the prior art. Our decision and analysis would be the same under either party’s proposal.” slip op. at 10

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

    “that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). We construe the claims only to the extent necessary to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties assert that claim terms should receive their plain and ordinary meaning and that no claim terms require construction. Pet. 16; PO Resp. 15. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10

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

    “c. Analysis We determine that natively mounting Burdett’s cloud data store 306 on a FortiSandbox device to implement Burdett’s malware scanning services would improve network security. It would preserve the privacy of files in cloud file stores and protect the enterprise network from malware by using a FortiSandbox network security device at an enterprise network (rather than in a public cloud store) to scan files for malware. Files would be scanned on schedules and criteria optimized to the security of the enterprise rather than schedules or criteria of a third-party cloud-based service provider and doing bulk scans not taught in Burdett. Pet. 30; Ex. 1013 ¶ 37; Ex. 1002 ¶ 88. We agree with Dr. Franz’s testimony that performing scans on a device located in an enterprise network would enhance controllability and privacy by allowing an enterprise to perform bulk scans on schedule or on demand and more advanced scans that a cloud service provide cannot do. Ex. 1013 ¶ 37; Tr. 21:20–23:22. An enterprise could scan files according to scanning schedules and criteria that most effectively improve its network security rather than using a cloud storage provider’s criteria and schedules. Indeed, Patent Owner asserts that scanning files in cloud storage on virtual machines is inefficient. PO Resp. 6 (citing Ex. 1001, 1:67–2:3); see KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”); see DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (an implicit motivation to combine exists when an “improvement” makes a product more efficient). Burdett teaches that its scanning service 304 may be managed by security manager 316 implemented outside cloud infrastructure service 302. Ex. 1004, 24:1–3, 24:32–41. Burdett’s scanning service may copy files from the cloud data store to a local data store. Id. at 30:57–62; Reply 22. Burdett uses local data storage to perform security scans. Ex. 2004 ¶ 65. We find that natively mounting a cloud data store on a FortiSandbox device for scanning files would give an enterprise greater control over the scanning of enterprise files for malware while storing the files in cloud data store 306. Ex. 1013 ¶ 37; Ex. 1002 ¶¶ 70, 88, 89. We agree with testimony of Dr. Franz that an enterprise scanner is easier to supervise, and it ensures that scans are performed and completed properly, and the encrypted network connections protect transmitted files. Ex. 1013 ¶ 38; see Tr. 23:23–24:10.” slip op. at 16

  Patent outcomesUS 11,036,856 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,036,856
• Datavant, Inc. v. Vigilytics LLCInstituted
  PTAB · Jun 26, 2024 · IPR2024-00311 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on claims 1–22 on all three asserted § 103 grounds, finding a reasonable likelihood of success on each challenge.

  RulingsInstitution decision

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

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion 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).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Ex. 1003, Clark Decl. ¶ 22). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶ 22).” slip op. at 7

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

    “without waiving its right to pursue alternative constructions in any future litigation.” Pet. 8. We understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under the Phillips standard applied by the district courts. 37 C.F.R. §§ 42.100(b), 42.104(b)(4). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,109,375

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.