• Wiz, Inc. v. Orca Security Ltd.Instituted
  PTAB · Dec 9, 2024 · IPR2024-00865 · APJ Michael R Zecher · IPR · Institution

  Instituted IPR on claims 1–22 and all asserted grounds; the Petition showed a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘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 ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Wiz filed a Sotera stipulation. Ex. 1083.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “The parties do not dispute that Veselov is the only reference that serves as the basis of Wiz’s asserted obviousness grounds that was considered by the Examiner during prosecution of the ’685 patent. See Ex. 1004, 57, 104. The Examiner, however, did not meaningfully address Veselov during prosecution of the ’685 patent. Stated differently, with respect to factor (a), the Examiner did not apply the teachings of Veselov to teach or suggest the limitations of the originally presented claims of the ’685 patent, nor did the Examiner apply the teachings of Veselov to account for language that was added via amendment during prosecution. It is undisputed that the other four references that serve as the basis of Wiz’s asserted obviousness grounds (i.e., Hufsmith, Chari, Price, and Huseinović) were not considered by the Examiner during prosecution of the ’685 patent. Nor did the Examiner have the benefit of Dr. Stavrou’s testimony regarding the teachings of all five references. Orca’s arguments do not appear to implicate factors (b) and (d), so we decline to engage in a substantive analysis of these two factors based on the record before us. Accordingly, we are not persuaded by Orca’s arguments that the Petition presents substantially the same art and arguments that were considered previously by the Examiner during prosecution of the ’685 patent.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “Based on the preliminary record, the only claim term that requires construction is “[analyze/analyzing] the at least one snapshot,” and only to the extent necessary to resolve the controversy between the parties. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We understand Wiz to propose a construction for the claim term “[analyze/analyzing] the at least one snapshot” that encompasses the following two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from the snapshot.” See Pet. 10–11. Orca disputes the latter approach, but not the former approach. See Prelim. Resp. 10–11. With this in mind, and for purposes of institution, we preliminarily agree that the claim term “[analyze/analyzing] the at least one snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the specification of the ’685 patent.6 See, e.g., Ex. 1001, 5:19–20 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 5:36–39 (“Further, the security system 140 may be configured to match the application files, either directly (using binary comparison) or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Wiz’s obviousness analysis is sufficient under this first approach, we take no position on the second alternative approach in Wiz’s proposed construction. 6 At this stage of the proceeding, we do not make a finding of lexicography or disclaimer. Nor do we determine that “[analyze/analyzing] at least one snapshot” is necessarily limited to “direct analysis of the snapshot data.”” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Wiz’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound (i.e., encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Wiz’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’685 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,693,685
• Wiz, Inc. v. Orca Security Ltd.Instituted
  PTAB · Dec 9, 2024 · IPR2024-00864 · APJ Garth D Baer · IPR · Institution

  The Board instituted IPR on claims 1–25, finding a reasonable likelihood that claims 1–11 and 13–25 would have been obvious over Veselov and Hufsmith, and claim 12 over those references and Hutchins.

  RulingsInstitution decision

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

    “shows that ‘efficiency, fairness, and the merits support the exercise of authority to deny institution.’” Prelim. Resp. 45 (quoting Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential). After Patent Owner filed its Preliminary Response, however, Petitioner filed a stipulation consistent with the stipulation filed in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A) (“Sotera”). Ex. 1083. On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘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 ground that could have been reasonably raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1083.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “snapshot.” Petitioner proposes we construe this term to encompasses two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from the snapshot.” See Pet. 10. Patent Owner disputes the second approach, but not the former. See Prelim. Resp. 9–11. For purposes of institution, we agree with Petitioner’s first alternative approach “analyz[ing] the snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the specification of the ’032 patent. See e.g., Ex. 1001, 5:20–21 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 5:37–40 (“[T]he security system 140 may be configured to match the application files, either directly (using binary comparison) or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Petitioner’s obviousness analysis is sufficient under this first approach, we take no position on Petitioner’s second alternative approach, which Patent Owner disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Although Petitioner submits an additional term for construction, see Pet. 8–9, we do not need to further construe the claims to determine whether to institute IPR. See Nidec Motor Corp. 868 F.3d at 1017.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound (i.e., encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Petitioner’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’032 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,663,032
• Wiz, Inc. v. Orca Security Ltd.Instituted
  PTAB · Dec 9, 2024 · IPR2024-00863 · APJ Garth D Baer · IPR · Institution

  The Board instituted IPR on claims 1–16, finding a reasonable likelihood that claims 1, 3–9, and 11–16 are obvious over Veselov and Price, with additional grounds for claims 2, 10, 6, and 14.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Notably, the Director stated that “the [Patent Trial and Appeal Board (‘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 ground that could have reasonably been raised before the PTAB.” Id. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because Petitioner filed a Sotera stipulation. Ex. 1083.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “B. Claim Construction Independent claims 1, 9, and 16 each require “analyz[ing] the at least one snapshot.” Petitioner proposes we construe this term to encompasses two alternative approaches: (1) “direct analysis of the snapshot data”; and (2) “analysis of a VM instantiated from the snapshot.” See Pet. 10–11. Patent Owner disputes the second approach, but not the former. See Prelim. Resp. 12–14. For purposes of institution, we agree with Petitioner’s first alternative approach—“analyz[ing] the at least one snapshot” encompasses “direct analysis of the snapshot data.” This construction finds support in the specification of the ’031 patent. See e.g., Ex. 1001, 6:17–18 (“The snapshot is parsed and analyzed by the security system 140 to detect vulnerabilities.”), 6:23–24 (“[T]he security system 140 may be configured to match the application files, either directly using binary comparison or by computing a cryptographic hash against [a] database of files in vulnerable applications.”). Because, as we explain below, Petitioner’s obviousness analysis is sufficient under this first approach, we take no position on Petitioner’s second alternative approach, which Patent Owner disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern a material difference between the assessments of the level of skill in the art advanced by either party, nor does either party premise its arguments exclusively on its own assessment. For purposes of institution, we adopt Petitioner’s assessment, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound (i.e., encompassing a Ph.D. degree and beyond), and does not meaningfully indicate the level of skill in the art. Petitioner’s assessment—without the qualifier—is supported by the testimony of Dr. Stavrou and it is consistent with the ’031 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under each party’s assessment.” slip op. at 9

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

    “As noted above, Petitioner explains that a skilled artisan would have been motivated to combine Veselov’s virtual computing security assessment system with Price’s inactive/at rest security assessments “to provide the well-known security benefit of preventing further damage that might otherwise be caused if a potentially compromised VM actively runs (e.g., a vulnerability could be exploited, or suspected malware could contaminate other resources).” Pet. 24 (citing Ex. 1048 ¶ 14; Ex. 1002 ¶ 105). With this rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one skilled in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Patent Owner’s argument highlighting mere differences between Veselov and Price—i.e., Veselov’s active VMs versus Price’s inactive ones—does not undermine Petitioner’s proffered rationale and does not suggest that Price’s inactive security assessments are incompatible with Veselov’s general security-assessment structure. In addition, Petitioner presents sufficient arguments and evidence for purposes of institution that a skilled artisan would have a reasonable expectation of success in making the proposed combination. Specifically, Petitioner explains, with relevant support from its declarant, Dr. Stavrou, and the prior art, that “[o]ffline snapshotting and offline analysis were routine and predictable.” Pet. 25 (citing Exs. 1002, 1073, 1081). “Moreover,” Petitioner explains, “most of Veselov’s snapshot-generation and analysis techniques require no interaction with the original VM and, as a result, the state of the original VM can be inactive or at rest when the snapshot is taken and while the snapshot analysis is being performed.” Id. (citing Exs. 1002, 1007). Patent Owner’s arguments that “[n]othing in Veselov discloses or suggests” either no-interaction snapshots or that the original VM can be inactive when the snapshot is taken, see Prelim. Resp. 31, does not undermine that one skilled in the art would have a reasonable expectation of success in taking and analyzing snapshots of inactive VMs.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,663,031
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-01020 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa.” slip op. at 7

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

    “1. environment Patent Owner initially argues that “environment” should mean “physical surroundings in which a user operates.” PO Resp. 6. Petitioner responds that the plain meaning of environment “encompasses physical and virtual environments.” Reply 2. During the hearing, Patent Owner conceded that Petitioner’s construction for environment is correct. Tr. 49:24–50:10. We agree with this construction and apply it here. See, e.g., Ex. 1001, 28:16 (referring to “a physical or a virtual environment”). “Environment” encompasses physical and virtual environments.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “insufficient to support the concept of alerting a user that the user is leaving a virtual environment. In so deciding, we need not address the parties’ contentions about boilerplate. Regardless of whether the sentence at 168:15–16 of the ’140 application is boilerplate, we agree with Petitioner that “there is no suggestion of the specific claimed combination.” Reply 22 (citing Ex. 1146 ¶ 82). That is, if one views the “[e]xamples herein” from Figure 6 as taking place “in computer rendered spaces (VR)” or “in partially computer rendered spaces (AR),” there is still no disclosure of alerting a user that a user is leaving a virtual environment. See Ex. 1028, 168:15–16. For instance, if Alice in the Figure 6 example mentioned above is entering a virtual car instead of a real car, Alice is still in a virtual environment. See id. at 120:13–27. Thus, relying on Figure 6 to take place “in computer rendered spaces (VR)” does not support alerting that a user is leaving those virtual spaces. See id. at 168:15–16. Petitioner also correctly identifies a problem with analogizing the Alice example to a virtual environment—namely, it would no longer make sense to give Alice an audible warning. See Reply 22 (citing Ex. 1146 ¶ 82). In the example, Alice’s earphones switch from binaural sound to mono sound when Alice enters a real car because “[t]he state where Alice is located . . . prohibits drivers from localizing sound while driving a motorized vehicle.” Ex. 1028, 120:15–18. But it would not make sense (nor does the ’140 application disclose) for a state to prohibit Alice to localize sound while driving a virtual vehicle. We therefore find compelling Petitioner’s argument, supported by the testimony of Dr. Roginska, which we credit, that there is no “disclosure that 3D audio would not be permitted in a 3D virtual space.” Reply 22 (citing Ex. 1146 ¶ 82). Accordingly, Patent Owner’s second support argument fails.10” slip op. at 18

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

    “One benefit Petitioner proposes to support a rationale to combine is that a POSITA “would have implemented this feature to help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44 (citing, e.g., Ex. 1003 ¶¶ 90, 251–254). Petitioner provides additional argument and evidence supporting a motivation to combine, with a reasonable expectation of success. See id. at 42–46. We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 52 (citing Ex. 1003 ¶¶ 250–268). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43–44. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 24

  Patent outcomesUS 10,448,184 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,448,184
• Meta Platforms, Inc. / Meta Platforms Technologies, LLC et al. v. Eight KHZ, LLCAll claims unpatentable
  PTAB · Dec 3, 2024 · IPR2023-01019 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Lyren and Reif; the Board did not reach the Clement, Osman, and Sauk ground.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Accordingly, we are not persuaded that the ’140 application supports the claimed concept of warning or alerting a user that the user is leaving the virtual environment. Thus, the ’140 application does not support the full scope of the limitations “warning the user that the user is leaving the 3D virtual environment” in claim 1 and “alerting the user that the user is leaving the environment” in claims 7 and 14. The parties have not made any additional arguments regarding support in the ’140 application for limitations of the dependent claims. We conclude that no claim of the ’179 patent is entitled to priority to the ’140 application.” slip op. at 22

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

    “We agree that, in the combination, a POSITA would have implemented Lyren’s audible alerts to alert the user that the user is leaving Reif’s safe zone (and thus the virtual environment) to help keep users safe. Id. at 51 (citing Ex. 1003 ¶¶ 250–263). We also agree with Petitioner’s articulated benefit that the combination would “help protect the users from injury by bumping, hitting, tripping over, etc., real-world objects when moving around while viewing the virtual environment in the HMD (i.e., a type of head-mounted WED).” Id. at 43. Accordingly, we agree with Petitioner that the combination of Lyren and Reif discloses each limitation of claim 14, as well as similar limitations of claims 1 and 7, and that one of ordinary skill in the art would have combined Lyren and Reif in the manner proposed, with a reasonable expectation of success.” slip op. at 26

  • ExcludeMotion to exclude, deniedGranted in part

    “paragraphs of Dr. Roginska’s declarations in Exhibits 1003 and 1146. Mot. 1; Reply to Opp. 1. Some of these paragraphs support Petitioner’s challenge based on Clement, Osman, and Sauk. Mot. 2–5, 7–11. Because we do not reach Petitioner’s challenge based on Clement, Osman, and Sauk, we do not rely on the portions of Dr. Roginska’s declarations addressing Clement, Osman, and Sauk. Accordingly, we dismiss this portion of Patent Owner’s Motion to Exclude as moot.” slip op. at 27

  Patent outcomesUS 10,368,179 unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,368,179
• Google LLC / Samsung Electronics Co., Ltd. et al. v. Eyesmatch Ltd.Instituted
  PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14

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

    “We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,982,109
• Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. et al. v. Eyesmatch Ltd.Instituted
  PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution

  The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.

  RulingsInstitution decision

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

    “Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).9 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., 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.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10

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

    “Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11

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

    “We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,982,110
• Palo Alto Networks, Inc. v. BT Americas Inc.All claims unpatentable
  PTAB · Nov 7, 2024 · IPR2023-00889 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious under § 103 over the four stated combinations of prior art.

  RulingsFinal written decision

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

    “On the full record, after weighing the arguments and evidence, including evidence of objective indicia of nonobviousness, we determine that Petitioner shows by a preponderance of evidence that claim 18 would have been obvious. Turning to dependent claims 19–25, having weighing the arguments and supporting evidence on this record, including evidence of secondary considerations and the arguments as summarized above for claims 1 and 18, we determine that Petitioner shows by a preponderance of evidence that claim 19–25 would have been obvious. See Pet. 75–85. Patent Owner does not separately address Petitioner’s showing with respect to these claims. See PO Resp. 54–60 (grouping claims 18–25 together).” slip op. at 122

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “3. Summary of Claims 18–25 As found above, the record shows that no presumption of nexus exists and no nexus exists between Patent Owner’s evidence of objective indicia of nonobviousness and the claimed invention. Even if a weak nexus exists, Petitioner’s showing of obviousness outweighs the evidence of nonobviousness. On the full record, after weighing the arguments and evidence as set forth in the parties’ briefs, including that related to objective indicia of nonobviousness, we determine that Petitioner shows by a preponderance of evidence that claims 18–25 would have been obvious.” slip op. at 122

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “3. Summary of Claims 18–25 As found above, the record shows that no presumption of nexus exists and no nexus exists between Patent Owner’s evidence of objective indicia of nonobviousness and the claimed invention. Even if a weak nexus exists, Petitioner’s showing of obviousness outweighs the evidence of nonobviousness. On the full record, after weighing the arguments and evidence as set forth in the parties’ briefs, including that related to objective indicia of nonobviousness, we determine that Petitioner shows by a preponderance of evidence that claims 18–25 would have been obvious.” slip op. at 122

  Patent outcomesUS 7,895,641 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,895,641
• Sonos, Inc. v. Google LLCSome claims unpatentable
  PTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a 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 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 PO Resp.; PO Sur-reply. 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 8

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

    “In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit 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 9

  • BurdenMixed

    “that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21

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

    “We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20

  Patent outcomesUS 11,050,615 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,050,615
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

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

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825

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.