• Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentable
  PTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner

    “We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18

  • Skill levelSkill level board ownOther

    “formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74

  Patent outcomesUS 7,219,553 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 7,219,553
• Telesign Corporation v. Twilio Inc.All claims unpatentable
  PTAB · Mar 6, 2019 · IPR2017-01977 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–3, 5, 14, 16, 17, and 19 are unpatentable as obvious over Maes and Ransom, alone or with Jiang; the ETSI-based grounds were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in computer science with at least two years of experience in application development.” Pet. 8 (citing Ex. 1009 ¶¶ 49–50). Patent Owner argues that a person of ordinary skill in the art would have had “the equivalent of a four-year degree from an accredited institution in computer science, computer engineering, electrical engineering, software engineering, or the equivalent, and approximately 1–2 years of professional experience with or exposure to computer networking, telephony networking protocols, and various APIs,” but “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” PO Resp. 10 (citing Ex. 2010 ¶ 32).” slip op. at 5

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

    “transfer (REST) API” to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and, hypermedia as the engine of application state.” PO Resp. 10. Petitioner does not propose an express construction for the term “representational state transfer (REST) API,” but acknowledged at the oral hearing that Patent Owner’s proposed construction “simply makes express what [Petitioner] implies.” Tr. 32:24–33:13. Patent Owner’s proposed construction is supported by the specification of the ’376 patent and the extrinsic evidence. Specifically, the ’376 patent indicates that the term “REST” has its ordinary meaning in the art (Ex. 1001, 2:15–16, 8:12–14), and Patent Owner’s declarant, Dr. Negus, explains that a person of ordinary skill in the art would understand the term “REST API” to refer to the interface constraints set forth in Patent Owner’s proposed construction (Ex. 2010 ¶¶ 163–166). Patent Owner’s proposed construction also is consistent with the construction that was adopted by the District Court in a related case. Ex. 2005, 16–22. Therefore, the term “representational state transfer (REST) API” is construed to mean “an application programming interface that complies with Representational State Transfer (REST) interface constraints, which are: identification of resources; manipulation of resources through representations; self-descriptive messages; and hypermedia as the engine of application state.”” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable

    “had reason to combine the cited teachings of Maes and Ransom. Pet. 12, 14, 22–24, 27–29 (citing Ex. 1009 ¶¶ 51–58, 62–75, 80–82, 88). We agree with and adopt Petitioner’s reasoning. Specifically, Maes and Ransom relate to the same field of endeavor as the ’376 patent, namely, web services. Pet. 12, 14; Ex. 1001, 1:66–2:10, 15:51–61; Ex. 1003, 3:52–65; Ex. 1004 ¶¶ 5, 42, 46, 57–58, 69–70, 78; Ex. 1009 ¶¶ 51–58. It would have been obvious to combine the cited teachings of Maes and Ransom because Ransom’s REST API is a common web service model that provides similar functionality and has several design advantages over Maes’s SOAP API, such as increased interface flexibility and lower bandwidth requirements. Pet. 22–24, 27–29; Ex. 1004 ¶ 163; Ex. 1009 ¶¶ 62–75, 80–82. It also would have been obvious to combine the cited teachings of Maes and Ransom because the teachings of Maes and Ransom are interrelated. Pet. 24, 28–29; Ex. 1009 ¶ 88; see KSR, 550 U.S. at 418 (“Often, it will be necessary . . . to look to interrelated teachings of multiple patents.”). Namely, Maes teaches using a web service (Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1009 ¶ 88), and Ransom explains that REST is one of two common web service models (Ex. 1004 ¶ 163; Ex. 1009 ¶ 88).” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedMixed

    “Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’376 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 31

  Patent outcomesUS 8,755,376 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,755,376
• Telesign Corporation v. Twilio Inc.All claims unpatentable
  PTAB · Mar 6, 2019 · IPR2017-01976 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–6, 9, and 13 are unpatentable as obvious over Maes and Ransom; the Board did not find the claims unpatentable on the ETSI-based grounds.

  RulingsFinal written decision

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

    “Patent Owner’s argument is not persuasive. “The Supreme Court’s decision in KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). As such, “[t]he field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Here, the ’465 patent is directed to “making telephony application development as easy as web programming” by using “the familiar web site visitor model” that allows developers to “reuse their existing tools and techniques.” Ex. 1001, 1:66–2:10; Ex. 1010 ¶ 54. Ransom is directed to transporting data between a mix of secure and unsecure networks in an electric power distribution system using “a communication network” that “is a publicly accessible data network such as the Internet or other network or combination of sub-networks that transmit data utilizing the transmission control protocol/internet protocol (‘TCP/IP’) protocol suite.” Ex. 1004 ¶¶ 5, 58; Ex. 1010 ¶¶ 57–58. Thus, both the ’465 patent and Ransom are directed to the field of web services, with the ’465 patent focusing on telephony applications and Ransom focusing on electric power distribution applications. See Unwired Planet, 841 F.3d at 1001 (“Here, both Galitz and the ’205 patent are in the field of interface design, with Galitz focusing on graphical user interfaces and the ’205 patent focuses on interfaces for location-based services.”).” slip op. at 23

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

    “Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24

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

    “Patent Owner’s arguments are not persuasive. Petitioner presents factual support from the prior art and also from Petitioner’s declarant, Dr. Nielson, that combining the cited teachings of Maes and Ransom would have been nothing more than using Ransom’s URI according to its established function of identifying a message recipient to yield the predictable result of sending a message to the identified recipient. Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 62. Petitioner also presents factual support from the prior art and from Dr. Nielson that it would have been obvious to combine Maes and Ransom based on their interrelated teachings. Ex. 1003, 3:52–65, 15:66–16:4; Ex. 1004 ¶¶ 162–163; Ex. 1010 ¶ 58. Because these reasons for combining Maes and Ransom are sufficient, Petitioner need not show a deficiency in Maes, a teaching, suggestion, or motivation in Maes or Ransom, or a market or design demand for the combination. See KSR, 550 U.S. at 416, 418.” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for patent owner

    “and launch schedule,” “technical architecture plans,” “programming model,” “Application Programming Interfaces (API),” “marketing plan,” “business and/or financial projections,” and “clients.” Ex. 2041, 3. But Patent Owner does not explain how the NDA shows that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Ex. 2041, 1–3. Similarly, Patent Owner does not explain how the accounts created by Petitioner’s co-founder show that Petitioner had access to and copied the specific Programmable Voice product. See PO Resp. 55–56; Tr. 75:16–76:7, 77:20–78:4; Exs. 2047–2054, 2063–2066. Further, Patent Owner’s copying allegation focuses on Petitioner’s change from a SOAP-based product to a REST-based product. PO Resp. 55–56. However, Patent Owner acknowledged at the oral hearing that the challenged claims of the ’465 patent do not mention REST. Tr. 45:2–3 (“[T]he ’465 patent itself doesn’t have anything about REST or SOAP in the claims.”). Patent Owner similarly acknowledged at the oral hearing that REST is not the point of novelty of the ’465 patent. Id. at 45:4–7 (“REST and SOAP are just implementation methods . . . that’s not what the point of novelty of these patents is at all.”), 57:13–15 (“SOAP and REST are just languages, API, they’re formats. There’s nothing special about either of them.”). As a result, even if Petitioner changed from a SOAP-based product to a REST-based product, that would not show that Petitioner copied the technology claimed in the ’465 patent. Therefore, because the evidence of record indicates that Petitioner had access to some of Patent Owner’s technology, but does not show specifically that Petitioner copied the invention claimed in the ’465 patent, the objective indicia of copying at best only weighs slightly in favor of non-obviousness.” slip op. at 28

  Patent outcomesUS 8,837,465 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 8,837,465
• Controls Southeast, Inc. v. Qmax Industries, LLCRehearing denied
  PTAB · May 30, 2018 · IPR2017-00977 · APJ Patrick R Scanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution of review of claim 3 under § 103 over Malone, Bilbro, and Mizuno in place.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “the Board reviews its decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We further note that 37 C.F.R. § 42.71(d) states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

  • Expert testimonyNot reached

    “Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6

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

    “Regarding Petitioner arguing, with respect to claim 1, that it would have been obvious to one of ordinary skill in the art “to form metal foil 9 of Malone from the rigid metal used for channel member 10 [of Bilbro]” in order to meet the limitation of the heat transfer element physically protecting the tracer tubing (Pet. 24 (citing Ex. 1014 ¶ 160)), we determined that this argument was an alternative to Petitioner’s argument that Malone’s foil 9, unmodified, physically protects heating cable 8, and expressly did not rely on this alternative argument with respect to claim 3. Dec. 23. In addition, we noted that Petitioner’s expert, Dr. Abraham, testified in connection with claim 3 that one of ordinary skill in the art would be motivated to form foil 9 into a rigid structure (see Ex. 1014 ¶¶ 310, 313, 314), but found it unnecessary to rely on this testimony. Dec. 23 n.7. As such, we did not determine that the Petition was ambiguous and did not “piece together support” for Petitioner’s unpatentability theory, as alleged by Patent Owner. See Reh. Req. 5.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 8,662,156
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01690 · APJ Scott C Moore · IPR · Final written decision

  Petitioners failed to prove claims 1–10, 15, 20, and 24 unpatentable because they did not show a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Notably, Dr. Creusere never opines that a person of ordinary skill in the art would have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present, in the manner Petitioners allege would have satisfied claim limitations 1f and 24f. See ’179 IPR, Ex. 1002 ¶¶ 141–146, 191–202; ’808 IPR, Ex. 1002 ¶¶ 141– 146, 191–202. In fact, during his deposition, Dr. Creusere confirmed that he was not offering an opinion that a person of ordinary skill in the art would have refrained from calculating Hsu’s block type and redundancy metrics when Franaszek’s “type” information was not present: Q. And in your declaration, you don't propose that a POSA would only use Hsu when Franaszek already has a data type and not use Hsu when Franaszek doesn't have a data type, right? A. I don't propose that a POSA has to do that. Though I do discuss the advantages that one could achieve if one had a data type, and one were to combine that with Hsu, but I don't say -- I don't say that you can only apply Hsu when you -- when you have a data type. Q. You don't have an opinion that a POSA would have been motivated to use Hsu only when Franaszek has a data type, but would not have been motivated to use Hsu when Franaszek doesn't have a data type, right? A. I don't believe that I expressed an opinion on that in my declaration. Ex. 2003, 130:18–131:12 (emphases added).” slip op. at 26

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00808 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to forgo Hsu’s analysis when Franaszek lacked type information.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In contrast, Patent Owner’s declarant, Dr. Zeger, directly addresses the issue in dispute, and testifies that a person of ordinary skill in the art would not have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present: While I do not agree that a POSA would be motivated to combine Franaszek with Hsu at all, I do agree with Dr. Creusere that if a POSA were to make such a combination, the POSA would rely on Hsu’s powerful data type recognition and compressibility analysis approach to identify a data type and redundancy metrics for each of Franaszek’s data blocks. I also agree with Dr. Creusere’s testimony that using Hsu in such circumstances would help Franaszek “pick a better compression technique and get more compression.” Id. at 130:12-17. I certainly do not believe that a POSA would want to refrain from using Hsu’s powerful data type recognition and compressibility analysis approach when Franaszek lacks data type information. To the contrary, Hsu describes a system that avoids any content independent compression and that instead uses an entirely content-dependent approach, and its teachings are thus heavily directed toward an approach for always identifying a data block’s data type as well as its three redundancy metrics. Thus a POSA would have to disregard a core aspect of Hsu’s teachings in order not to use Hsu when Franaszek lacks a data type. I agree with Dr. Creusere that a POSA would not take such an approach. It would certainly not be obvious for a POSA to do so. Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00179 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 28

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01688 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian, because the combinations render the claims obvious.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • PTAB / AIA Trials › Motions to amend / substitute claimsOther

    “Schulhauser was only raised by Petitioner after the time to bring a motion to amend had passed. PO Br. 2–3. To the extent that Patent Owner is suggesting that it was deprived of the opportunity to file a motion to amend, we disagree because Patent Owner should have been aware of Schulhauser since at least the filing of Petitioner’s Reply (i.e., December 5, 2017). Yet, Patent Owner’s additional briefing filed on March 5, 2018 was the first and only time Patent Owner made reference to a motion to amend. PO Br. 2–3. Although the time to file a motion to amend, under the Scheduling Order, had passed when Petitioner filed its Reply, Patent Owner was free to seek leave to file a late motion to amend. However, Patent Owner did not contact the Board on this issue.11 We, therefore, find that it is appropriate to apply Schulhauser in the context of this proceeding for at least the reasons explained supra.12” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s Declarant Dr. Kenneth A. Zeger, Ph.D., does not disagree with Petitioner’s statements regarding the level of ordinary skill in the art. Ex. 2005 ¶ 20. Based on our review of the ’506 patent, the types of problems and solutions described in the ’506 patent and cited prior art, and the testimony of Dr. Creusere and Dr. Zeger, we adopt and apply Dr. Creusere’s definition of a person of ordinary skill in the art at the time of the claimed invention for purposes of this Decision.” slip op. at 9

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

    “always perform the if A, then perform step X limitation of claim 104. In addition, Dr. Zeger’s opinion that the Franaszek and Hsu combination fails applies only to the if not A, then perform step Y limitation of claim 104. Dr. Zeger’s opinion that the combination fails was given in the context of his opinion that both the if A, then perform step X limitation of claim 104 and the if not A, then perform step Y limitation of claim 104, must be taught in order to demonstrate unpatentability. It is noted that claim 104 is a method claim being analyzed under Schulhauser16; therefore, it is sufficient for Petitioner to show that the combination of Franaszek and Hsu teaches either the if A, then perform step X limitation of claim 104 or the if not A, then perform step Y limitation of claim 104. We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00806 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “using Hsu’s approach will always identify a result for a block’s data type (id.); we agree with Dr. Creusere’s testimonial admission. In particular, in response to Patent Owner’s question of whether Hsu’s approach always identifies a given data block, Dr. Creusere answered: As far as the – as the data type information as output by Hsu’s new file routine, that, that’s – that will – that should in my, in my opinion, as a person of ordinary skill in the art, my best estimate is that will always output something. It will always give you something. Id. (quoting Ex. 2003, 21:13–22:6).” slip op. at 34

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

    “combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCAll claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00176 · APJ Jason J Chung · IPR · Final written decision

  Claims 104 and 105 are unpatentable as obvious under § 103(a) over Franaszek and Hsu, and over Franaszek, Hsu, and Sebastian.

  RulingsFinal written decision

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

    “present case for at least the reasons stated supra in § II.C.1., we construe claims 104 and 105 according to the broadest reasonable construction in light of the specification (i.e., using Schulhauser) as explained infra. In Schulhauser, the Board held that in method claim 1, only one of the following conditional limitations needed to be satisfied in the prior art to render the claim anticipated or obvious: (1) “triggering an alarm state if the electro cardiac signal data is not within the threshold electrocardiac criteria”; and (2) “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria.” Schulhauser at 6–8. To paraphrase, in Schulhauser, illustrative method claim 1 recited if A, then perform step X; if not A, then perform step Y. Id. In the same manner, claim 104 of the present case recites “performing content dependent data compression with a content dependent data compression encoder if a data type of the data block is identified” (hereinafter, “if A, then perform step X limitation of claim 104”) and “performing data compression with a single data compression encoder, if a data type of the data block is not identified” (hereinafter, “if not A, then perform step Y limitation of claim 104”). Ex. 1001, 2:34–45. Also, claim 105 recites “wherein if one or more encoders are associated to said type, compressing said data block with at least one of said one or more encoders” (hereinafter, “if A, then perform step X limitation of claim 105”) and “otherwise compressing said data block with a default data compression encoder” (hereinafter, “if not A, then perform step Y limitation of claim 105”). Id. at 2:57–60. Therefore, as a matter of law, we determine only one condition needs to be satisfied in the prior art to render the claim anticipated or obvious.” slip op. at 14

  • Strike new argumentNew argument consideredDecided for patent owner

    “As an initial matter, as discussed further below, we follow Schulhauser because it is precedential. Moreover, we find that each of the cases cited by Patent Owner is factually distinguishable from Schulhauser. The Board’s Standard Operating Procedures (“SOP”) require it to follow its precedential decisions. PTAB SOP No. 2, Rev. 9, 3 (Sept. 22, 2014) (“A precedential opinion is binding authority in subsequent matters involving similar facts or issues.”). Because this issue concerns claim construction, we conclude the best course of action under these specific circumstances is to follow our Tribunal’s SOP and our precedent in Schulhauser. To address APA concerns, due process concerns, the sufficiency of notice and potential prejudice, we allowed the parties the additional opportunity to brief the issue.10 Additional Briefing 1–2. In summary, Schulhauser is our precedent and it should apply given its potential applicability to the claim construction for the claims at issue.” slip op. at 12

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

    “We find Dr. Zeger’s testimony regarding the absence of a rationale to combine to be unpersuasive because it was based on the assumption that both alternate steps of claim 104 must be met. We, therefore, also find that Dr. Zeger’s testimony does not counter persuasively Petitioner’s showing that a PHOSITA would have had reason to combine Franaszek and Hsu in a manner that would have taught the if A, then perform step X limitation of claim 104. Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient” slip op. at 37

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

    “Accordingly, we are persuaded Petitioner has established by a preponderance of the evidence that: (1) Franaszek and Hsu teaches the if A, then perform step X limitation of claim 104; and (2) a PHOSITA would have combined Franaszek and Hsu.17 Petitioner has made sufficient 16 Supra § II.C. 17 We considered Patent Owner’s objections (Tr. 30:1–34:4, 63:17–23) and dismiss them as moot because we did not rely on Petitioner’s theory that Franaszek does not have a data type, then if you were to use Hsu in that showings that both grounds would have taught the remaining limitations of claim 104 (Pet. 14–36) and Patent Owner does not dispute these assertions (Paper 20, § B.1.b.) (“[A]ny arguments for patentability not raised in the response will be deemed waived.”). e. Conclusion In conclusion, and having performed the factual inquiries required by Graham, for the reasons given above and based on our review of the arguments and evidence of record, Petitioner has shown by a preponderance of the evidence that the combination of: (1) Franaszek and Hsu; and (2) Franaszek, Hsu, and Sebastian render obvious the subject matter of claim 104 of the ’506 patent.18” slip op. at 37

  Patent outcomesUS 7,161,506 unpatentable
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 7,161,506

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.