- PTAB · Aug 30, 2024 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Remand
On remand, the Board instituted inter partes review of claims 1–17, 20–21, 24–26, and 29–34 on all grounds stated in the Petition.
RulingsRemand decision- Director reviewOther
“Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17 (“Inst. Dec.”). Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel. Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Director Review Panel (“DRP”) vacated our decision and remanded the case to this panel with a revised construction for claim 1. Paper 23 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect (2018). Upon reconsideration of the briefing and the evidence of record in light of the DRP’s claim construction, we conclude that Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable. Accordingly, we grant institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Morales-Sanfrutos, Straus, Singh, and Lees. For instance, under the second prong of Advanced Bionics, we consider “(c) the extent to which the asserted art was evaluated during “(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art.” Becton, Dickinson, 17–18. We agree with Petitioner that the Office overlooked Morales- Sanfrutos’ and Singh’s teachings during examination and reexamination. Pet. 79. Although Morales-Sanfrutos, Straus, and Singh were listed on an IDS, they were not the subject of a rejection during examination or reexamination. Moreover, for the reasons discussed below at this stage with regard to Petitioner’s grounds over Morales-Sanfrutos, as evidenced by Straus, and over Singh, Petitioner sufficiently demonstrates that the Office materially erred in overlooking Morales-Sanfrutos’s and Singh’s teachings regarding their linker structures. Id. Further, to the extent the Lees’ teachings were considered during examination and reexamination, Lees’ disclosure of a homobifunctional sulfone linker was overlooked. Lees’ homobifunctional linker, which Patent Owner argues is substantially similar to Harris’ homobifunctional linker, which Petitioner chiefly relies upon in Grounds 2–5, was not the subject of a rejection during examination. Pet. Resp. Brief 1; Prelim. Resp. 25–26. We agree with Petitioner that only Lees’ heterobifunctional linker was applied in a rejection during examination. Pet. Resp. Brief 1; Ex. 1018, 42–43, 62. 4. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121
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.