• Palo Alto Networks, Inc. v. BT Americas Inc.Instituted
  PTAB · Nov 17, 2023 · IPR2023-00889 · APJ Karl D Easthom · IPR · Institution

  Instituted IPR on all challenged claims 1–25 based on the petition’s obviousness grounds, finding a reasonable likelihood of success on at least one claim.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2

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

    “The ’641 patent specification and claim language do not support Patent Owner. Limitation 1.b refers to “post-filtering” residue in relation to filtering that occurs prior to arriving at the residue, it does not preclude further filtering of the residue. The ’641 patent specification supports this plain meaning on this preliminary record with respect to precluding filtering of residue, as Petitioner argues. Reply 1–2 (citing Ex. 1001, 8:51–62). At the cited passage, the ’641 patent specification describes “additional analysis” of “residue information,” and implies that “data discrimination analysis,” which includes “filtering,” is part of such “additional analysis”: Anomaly engine 2050 determines what residue information may be worthy of additional analysis and sends such information to communications and resource coordinator 2060 for forwarding to the SOC. Negative filtering, positive filtering, and residue analysis are examples of data discrimination analyses, other types of which are well-known to those skilled in the art. Ex. 1001, 8:59–65 (emphasis added).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks and citation omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally does not limit the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 22

  • Skill levelSkill level board ownDecided for petitioner

    “of the ’641 patent, “would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶¶ 63–64). Patent Owner does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 31. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art, because it is consistent with the ’641 patent and the prior art of record, except that we delete the qualifier “at least” in the phrase “at least 2–3 years” to eliminate vagueness as to the stated amount of academic or industry experience.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,895,641
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 13, 2023 · IPR2023-00747 · APJ Scott Raevsky · IPR · Institution

  The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 are obvious over Kim and Chen.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that 4 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 5 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00571], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1032, 1. We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related District Court litigation.6” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “The Trial Practice Guide provides that “multiple petitions by a petitioner are not necessary in the vast majority of cases” but acknowledges that “there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Although Patent Owner has raised no priority dispute at this stage, Petitioner 8 We omit both parties’ italicization of reference names throughout. notes the potential for a dispute regarding whether the references qualify as prior art. Notice 1–2. Patent Owner has not stipulated that any of the references at issue in the -00571 petition qualify as prior art. See CTPG 61 (permitting a patent owner to “seek to avoid additional petitions by proffering a stipulation . . . that certain references qualify as prior art”). Thus, there exists the potential for a prior art dispute during trial. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a) (see CTPG 61), in light of the potential for a prior art dispute and Patent Owner’s silence on the matter, we decline to exercise that discretion here.” slip op. at 9

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’271 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A person of ordinary skill in the art (“POSITA”) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with telecommunications systems, including multiple-input multiple-output (“MIMO”) technology. Additional relevant work experience can compensate for less education, and vice versa. Pet. 8 (citing Ex. 1003 ¶ 81). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 9. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision, except that we do not include in our definition Petitioner’s last sentence regarding additional relevant work experience compensating for less education and vice versa, as this sentence is vague.” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,951,271
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 13, 2023 · IPR2023-00571 · APJ Scott Raevsky · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 are obvious over Liu and Park.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that 4 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 5 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00571], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1032, 1. We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related District Court litigation.6” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “In the Notice, Petitioner states that although it “believes that both Petitions are meritorious and justified,” it ranks the Petition filed in this proceeding first and the -00747 petition second. Notice, 1. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a) (see CTPG 61), in light of Petitioner ranking this Petition first, we decline to exercise that discretion here.” slip op. at 9

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

    “h. Summary as to Claim 1 Based on the preliminary record before us, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Liu and Park. 4. Independent Claims 6, 11, 16 Petitioner sets forth similar arguments for independent claims 6, 11, and 16 as for claim 1. See Pet. 53–62. Patent Owner relies on the same arguments for these claims as it does for claim 1. Prelim. Resp. 24–25. For similar reasons as discussed above, Petitioner has shown a reasonable likelihood that claims 6, 11, and 16 would have been obvious over the combination of Liu and Park.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSITA”) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with telecommunications systems, including multiple-input multiple-output (“MIMO”) technology. Additional relevant work experience can compensate for less education, and vice versa. Pet. 9 (citing Ex. 1003 ¶ 81). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 9. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision, except that we do not include in our definition Petitioner’s last sentence regarding additional relevant work experience compensating for less education and vice versa, as this sentence is vague.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,951,271
• Sonos, Inc. v. Google LLCInstituted
  PTAB · Nov 7, 2023 · IPR2023-00806 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR on claims 1–3, 5–12, and 15–19 because Petitioner showed a reasonable likelihood of prevailing on both § 103 grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’615 Patent. Accordingly, we institute an inter partes review of claims 1–3, 5–12, and 15–19 of the ’615 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2

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

    “this ground of unpatentability. Petitioner acknowledges that Roberts references “both in-band and out-of-band communication.” Pet. 27. In effect, Roberts provides options but does not favor a specific option. Asokan is cited because it favors one of those options and provides reasons why its option is preferred. Pet. 27–28. Petitioner is asserting, in effect, that Asokan guides one of ordinary skill in the art to select a particular option; in that sense, Petitioner is not advocating the bodily incorporation of some aspect of Asokan into the system of Roberts. Instead, Petitioner is arguing that one of ordinary skill in the art would have selected a particular embodiment of Roberts based on the teachings of Asokan. It may be that all of the benefits of use of the out-of-band communication detailed by Asokan would not result from the modified system of Roberts or the selection of a single embodiment, but Patent Owner, at this time, has not argued why those benefits would not accrue. Instead, Patent Owner is merely asserting that the arguments provided in the Petition are conclusory. We do not agree; we assume that in view of Asokan one of ordinary skill in the art would have considered the benefits of in-band and out-of-band communication, and would have made a selection on the basis of the reasons stated therein. Lastly, we are not persuaded that the Petition “omits the details of how to modify Roberts to incorporate this benefit from Asokan.” Prelim. Resp. 6 (citing Pet. 45). We view the motivation-to-combine analysis as a flexible one. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379–80 (Fed. Cir. 2023) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” (quoting KSR, 550 U.S. at 420 (emphasis added)). As discussed above, we assume that Roberts operates as disclosed using either in-band or out-of-band communication, such that we do not doubt that operating according to one embodiment would be operative. As such, given the subject ground of unpatentability, we are not persuaded that the Petition’s discussion of motivation to combine Roberts with Asokan renders the ground deficient.” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time 1 US 7,616,594 B2, issued Nov. 10, 2009 (Ex. 1004, “Roberts”). 2 US 2006/0251256 A1, published Nov. 9, 2006 (Ex. 1006, “Asokan”). 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’615 Patent issued was filed before this date, the pre-AIA version of § 103 applies. 4 US 9,288,228 B2, filed Aug. 5, 2011, patented Mar. 15, 2016 (Ex. 1005, “Suumäki”). the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, 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 re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 6

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

    “Petitioner asserts that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Pet. 14 (citing Ex. 1003 ¶¶ 79–82). Patent Owner does not assert any express constructions. See generally Prelim. Resp. Given the lack of controversy, we need not explicitly adopt or discuss any constructions in this decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,050,615
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00732 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’932 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).8 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’932 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “reasonable likelihood that Li was publicly accessible before the priority date of the ’932 patent. In particular, we determine that Petitioner has not shown a reasonable likelihood that Li “has been disseminated” or that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI, 511 F.3d at 1194. As an initial matter, Li is undated. We can find no indication anywhere in Li itself evidencing a timeframe in which it might have been published, not even a copyright date. There is also no indication in Li of any journal or website where Li may have been published. Dr. Hall-Ellis testifies that Li “appears beginning on page 12” of, purportedly, a record of the 12th International Conference on Telecommunication Systems: Modeling and Analysis, but the copy of Li submitted by Petitioner starts on page “1” and includes no further pages describing any conference. See Ex. 1009 ¶ 40; Ex. 1005, 1. Ultimately, there is nothing in the text of Li itself to distinguish Li from a draft paper that was never published. Petitioner submits no evidence that Li was disseminated at or around the time of the 12th International Conference on Telecommunication Systems: Modeling and Analysis. See Medtronic, 891 F.3d at 1381. Dr. Hall-Ellis testifies that Li was “presented” at the conference but submits no evidence in support of this assertion. Ex. 1009 ¶ 43. For example, Dr. Hall-Ellis does not address “whether the copies were freely distributed to interested members of the public” or whether there was a “legal obligation of confidentiality” when distributing any copies, among other factors. See Medtronic, 891 F.3d at 1381. Absent any such evidence, we conclude that Petitioner has not shown dissemination of Li at or around the time of the conference, or at any other time before the ’932 patent’s asserted priority date. Petitioner also does not sufficiently establish that Li was “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI Int’l, 511 F.3d at 1194. Dr. Hall-Ellis’s testimony is deficient because her testimony does not establish that Li was likely made available to the public before the critical date of the challenged patent. See Hulu, Paper 29 at 16. For example, Dr. Hall-Ellis does not claim personal knowledge of when Li was first published, was unclear as to when she obtained Li from the OPERA digital repository, and unpersuasively asserts that Li “is” available from other digital repositories. See Prelim. Resp. 32–33; Ex. 1009 ¶¶ 40–41. Whether Li “is” available online now does not establish that Li was publicly accessible in the relevant timeframe, i.e., 17 years earlier, prior to the April 20, 2006 priority date of the ’932 patent. Further, Dr. Hall-Ellis presents no persuasive evidence that the identified digital repositories hosted Li in the relevant timeframe. Patent Owner persuasively asserts that ResearchGate was established in 2008, after the priority date, and that Google Scholar’s page referencing Li links to ResearchGate. Prelim. Resp. 33–34 (citing Ex. 2014 (“We started ResearchGate in 2008 . . . .”); Ex. 1009 ¶ 41; see also id. n.23 (Google Scholar link, showing “[PDF] from researchgate.net”). Accordingly, these repositories do not support Dr. Hall-Ellis’s testimony that Li was publicly available in the relevant timeframe, before April 20, 2006. Dr. Hall-Ellis’s reliance on the CiteSeer repository is also unavailing because Dr. Hall- Ellis’s link to CiteSeer directly opens a PDF file of Li and does not provide any evidence showing that CiteSeer hosted Li in the relevant timeframe. See Ex. 1009 ¶ 41 n.24.” slip op. at 15

  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,719,932
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00731 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • BurdenDecided for patent owner

    “therefore, “the Board [will] not consider[] these hyperlinked webpages as evidence in [this] proceeding[].” Ex. 3001. As a result, Dr. Hall-Ellis’s declaration does not cite any supporting evidence of record in this proceeding (other than Li itself, Ex. 1005). Ex. 1009 ¶¶ 40–43. The declaration thus “does not disclose the underlying facts or data on which the opinion is based” and is therefore “entitled to little or no weight.” See 37 C.F.R. § 42.65(a). For this reason alone, we find that Petitioner has failed to establish the public accessibility of Li.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).7 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 22–23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’243 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 8,201,243
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Oct 20, 2023 · IPR2023-00603 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that Kim, Zhang, and Kang render at least one challenged claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[7] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation, which stipulates” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not read Xerox to require us to give little weight to an expert declaration solely because some or all of it is also repeated within the Petition. Rather, Xerox found a declaration was entitled to little weight where the declaration merely repeated “the conclusory assertion for which it is offered to support.” Xerox, Paper 9 at 15 (emphasis added). If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition. Patent Owner does not point to any specific statements in Dr. Kakaes’s declaration and explain specifically why Patent Owner believes they are conclusory, and thus, Patent Owner has not sufficiently explained the applicability of Xerox here. See, e.g., Prelim. Resp. 15 n.1, 18 n.2, 23 n.3, 25 n.4, 25 n.5, 34. Moreover, we can assess the weight to be given to Dr. Kakaes’s declaration testimony, including based on its corresponding factual support, if any, and afford such testimony an appropriate weight. Accordingly, at this stage, we decline Patent Owner’s invitation to assign no weight to all of Dr. Kakaes’s declaration testimony.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 12. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and open-ended. Pet. 10. As adopted, we view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Petitioner argues that “no terms need construction to resolve the controversy in this forum.” Pet. 8. Patent Owner argues that at this stage of the proceeding, “claim construction is not required to resolve any issues.” Prelim. Resp. 12. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,944,527
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Oct 20, 2023 · IPR2023-00599 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–12 under all asserted grounds: anticipation by Lee and obviousness over Lee and Chen.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation, which stipulates “that, if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00599], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1022, 1 (quoting Sotera Wireless, Inc., Paper 12 at 13–14) (alterations in original). We determine that the language of this stipulation sufficiently comports with the language of the stipulation discussed in the Director’s Memo. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related district court litigation.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not read Xerox to require us to give little weight to an expert declaration solely because some or all of it is also repeated within the Petition. Rather, Xerox found a declaration was entitled to little weight where the declaration merely repeated “the conclusory assertion for which it is offered to support.” Xerox, Paper 9 at 15 (emphasis added). If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition. Patent Owner does not point to any specific statements in Dr. Kakaes’s declaration and explain specifically why Patent Owner believes they are conclusory, and thus, Patent Owner has not sufficiently explained the applicability of Xerox here. See, e.g., Prelim. Resp. 13 n.1, 18 n.2, 21 n.3, 23 n.4, 25 n.5, 28 n.6, 29 n.7, 47–48. Moreover, we can assess the weight to be given to Dr. Kakaes’s declaration testimony, including based on its corresponding factual support, if any, and afford such testimony an appropriate weight. Accordingly, at this stage, we decline Patent Owner’s invitation to assign no weight to all of Dr. Kakaes’s declaration testimony.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt the recitals of “at least” as that language is vague and open-ended. Pet. 13. We also decline to adopt Petitioner’s assertion concerning “[a]dditional relevant work experience,” as it also is vague and open-ended. As adopted, we view the definition for the level of ordinary skill is consistent with the ’081 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 11

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

    “Petitioner argues that “no terms need construction to resolve the controversy in this forum.” Pet. 11. Patent Owner argues that at this stage of the proceeding, “claim construction is not required to resolve any issues.” Prelim. Resp. 10. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,912,081
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Oct 11, 2023 · IPR2023-00655 · APJ Scott Raevsky · IPR · Institution

  Institution was denied because Trend Micro did not show a reasonable likelihood that claims 1–30 were unpatentable, principally due to insufficient motivation to combine the asserted references.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’250 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person having ordinary skill in the art (PHOSITA [or POSITA]) at the time of the earliest claimed priority date for the ’250 patent would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or network forensics. More education can supplement practical experience and vice versa. Pet. 26 (citing Ex. 1002 § 81). Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 25 (citing Ex. 2001 ¶¶ 52–56). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’250 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision.” slip op. at 8

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

    “In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2022). The parties do not propose any claim constructions. See Pet. 9–10; Prelim. Resp. 28–29. We determine that no terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

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

    “The Supreme Court instructs us that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Petition contains insufficient articulated reasoning with rational underpinning.” slip op. at 11

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,418,250
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Instituted
  PTAB · Oct 11, 2023 · IPR2023-00699 · APJ Scott Raevsky · IPR · Institution

  The Board instituted review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that Sophos would prevail on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv at 12. Petitioner stipulates that, “if the Board institutes the present petition, Petitioner[] will not assert that the challenged claims are invalid on the instituted grounds in the related litigation, nor any other possible prior art printed publication grounds based on the references in Grounds 1 and 2.” Pet. 68. This is broader than a Sand Revolution stipulation but somewhat less restrictive than a Sotera stipulation. See Sand Revolution II, LLC v. Continental Intermodal Group- Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13–14 (PTAB Dec. 1, 2020) (precedential). While not rising to the level of a stipulation that the Interim Procedure indicates would preclude discretionary denial, Petitioner’s stipulation does mitigate concerns about overlapping issues with the related litigation. See Interim Procedure 7–8. We find this factor weighs against exercising discretion to deny institution.” slip op. at 10

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’250 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner defines the level of skill as follows: A person of ordinary skill in the art at the time of the invention . . . would have had a Bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science or in a similar discipline, and would have had 2-3 years of practical work or research experience in the general fields of electrical engineering, computer science, networking, communications, and device and network security. . . . More advanced degrees or training in a related discipline or both can compensate for shorter work experience. Prelim. Resp. 29 (citing Ex. 2001 ¶¶ 50–54). Patent Owner does not explain at this stage why its proffered level of skill differs from Petitioner’s. We note that both definitions are largely similar. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’250 patent and prior art of record. We thus adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition of the level of skill.” slip op. at 12

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

    “construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 9–10; Prelim. Resp. 28–29. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,418,250

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.