- Uber Technologies, Inc. v. Enovsys LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00825 · APJ Andrew L Nalven · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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 that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Step 1 of Figure 7 begins by obtaining the geographic information of the area to search for possible remote targets. Id. at 8:57–59. In step 2, the next geographic region where a possible search for a PRU is estimated. Id. at 8:64–66. In step 3, a page is sent out to that geographic region for remote units in the region to reveal their location. Id. at 9:2–4. In steps 4 and 5, if remote units are identified in the paged area, that information is forwarded to the network and the process continues to step 7 where the process is aborted. Id. at 9:4–6. Step 6 is performed if no units are identified in the paged area. Id. at 9:6–9. There, a check is done to establish if there are any remaining cells or grids higher up in the chain to be searched, and if so, the process returns to step 2 to search additional geographic areas. Id. at 9:9–12. The iterative process described in Figure 7 is consistent with Patent Owner’s proposed construction requiring forwarding a notification to only one or more PRUs currently located in a specific geographic boundary. Ex. 2001 ¶ 55; see also Ex. 1001, 8:32–54 (describing a grid search technique that may be implemented by the process of Figure 7).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent.” Pet. 8 (citing Ex. 1002 ¶¶ 28–30). Patent Owner does not dispute Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We are further not persuaded by Petitioner’s argument that forwarding notifications to the PRUs only within a specified geographic region renders element 12[D]’s step of verifying whether the PRUs exists within said region unnecessary. Pet. 35 n.8. Rather, we credit Mr. McAlexander who testifies that forwarding notifications to individually pollable geographic boundaries “does not obviate the need for the PRU to identify that the notification has been received or verify its location within the individual geographic boundary before responding.” Ex. 2001 ¶ 155.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,199,726 - Uber Technologies, Inc. v. Enovsys, LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00827 · APJ Thomas L Giannetti · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 15, or 22 unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Andrews Decl. ¶ 25). At this stage, Patent Owner does not dispute this contention. Prelim. Resp. 5. For the purpose of determining institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’918 patent specification and the asserted prior art.” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“means.” See Ex. 1001, 11:60–12:4, 12:6–8, 15:30–37. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 63 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Because the ’918 patent has a filing date before the We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 1, 2, and 22. See Pet. 7–12; Prelim. Resp. 9–21. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Having reviewed Patent Owner’s position on claim limitation 1[C], we determine that we do not need to expressly construe this claim term to effective date of the relevant amendment, we refer to the pre-AIA version of § 112. Owner acknowledges that the asserted network “includes control units programmed to obtain the locations of the offender and victim devices,” and does not base its arguments on the construction of this limitation. Id. at 42.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,756,918 - Uber Technologies, Inc. v. Enovsys, LLCInstitution deniedPTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,441,752 - PTAB · Oct 23, 2024 · IPR2024-00823 · APJ Carl W Whitehead Jr · IPR · Institution
Instituted IPR on claims 1–8 and 13–22 over Bigbee and Nguyen, finding a reasonable likelihood of obviousness, and granted Valeo’s motion to join IPR2023-01373.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments presented in the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’958 patent is unpatentable as obvious over the combination of Bigbee and Nguyen. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–8 and 13–22) on all grounds set forth in the Petition. Our determinations at this stage of the proceeding are based on the evidentiary record currently before us. This decision to institute trial is not a final decision as to the patentability of any claim for which we have instituted an inter partes review. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a Petitioner’s burden to establish a ‘reasonable likelihood of” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts: A person of ordinary skill in the art of the subject matter of the ’958 patent would have the equivalent of a bachelor’s degree in Computer Science, Computer Engineering (or a related field) and approximately two years of work experience with computer architecture design. Additional education in the field could be substituted for industry experience, and vice versa. See Prelim. Resp. 3. The parties’ positions appear to be more or less the same. Based on the current record, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision, as it is consistent with the level of ordinary skill in the art reflected by the prior art of record. We note that our Decision would be the same under either party’s proposed construction.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F. 3d 795, 803 (Fed. Cir. 1999))). After reviewing the parties’ evidence and contentions, we do not observe a dispute over the meaning of these terms that is necessary to resolve at this stage. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review and consideration of the current record, we determine that Petitioner has sufficiently shown that the combination of Bigbee and Nguyen teaches the recited elements of limitation 19a for purposes of institution and has provided reasons sufficiently supported by factual underpinnings to combine the references with a reasonable expectation of success. Nguyen discloses, “[t]he present invention addresses mechanisms for combining recoverable and non-recoverable error handling mechanisms efficiently in FRC-enabled processors.” Ex. 1006 ¶ 9. Subsequently, Nguyen distinguishes recoverable from non-recoverable errors by treating non-recoverable errors differently from recoverable errors. Nguyen discloses, “If an error reaches error detector 140 from either core 120, recovery module 150 is activated to implement a recovery routine. Recovery can be implemented with relatively low latency by hardware, software, firmware or some combination of these.” Id. ¶ 22, Fig. 1. “However, an FRC error will be triggered if the corrupted data from one execution core and an uncorrupted version of the data from the other execution are allowed to reach FRC checker 130 before recovery module 150 is activated.” Id. Nguyen recognizes, “[s]ince FRC errors are not recoverable, reset module 160 resets the system, if FRC checker 130 signals an FRC error before the underlying parity/ECC error is detected.” Id. Nguyen further recognizes that, “[n]ot all FRC-errors are traceable to underlying parity/ECC or other correctible soft errors. For those that are, it is faster for error detector 140 to address the under lying soft error than for FRC-checker to address the FRC error that results when the corrupted data reaches FRC boundary 104.” Id. ¶ 23 (emphasis added). In this instance instead of the FRC-error being processed by the FRC checker 130 and the Reset module 160, the FRC error is directed to the Error detector 140 and eventually recovery module 150. See id. at Fig. 1. Nguyen also discloses, “the recovery routine triggered by error detector 140 provides greater system availability than the reset routine triggered by FRC checker 130” and “[e]xpanding the FRC boundary thus increases both the amount of logic that is duplicated for execution cores 120 and the flight time, during which detectable errors may be identified.” Id. ¶ 30, Fig 1; see Pet. 37. Nguyen further discloses, “[t]he former increases FRC protection, albeit through a reset mechanism” as shown in Figure 1, elements FRC Checker 130 and Reset Module 160. Ex. 1006 ¶ 30. “The latter increases the likelihood that errors identifiable through parity, ECC [error correction code] or similar core-specific protections are handled through recovery rather than reset” as shown in Figure 1, elements Error Detector, 140 and Recovery Module 150. Id. Additionally, Nguyen’s Figure 7, as discussed above, “is a block” slip op. at 33
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,502,958 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “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, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - Freewheel Media, Inc. v. Intent Iq, LLCInstitutedPTAB · Sep 4, 2024 · IPR2024-00419 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–26 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 14 are obvious over Baig, Banga507, Banga690, and McFarland.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny petition or due to the alleged lack of particularity in the Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2
- Parallel petitionsDenied
“Consistent with the Board’s practice for handling parallel petitions, Petitioner filed a Petition Ranking (Paper 3, “Notice”). See Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019).2 In the Notice, Petitioner ranks this Petition first among the two petitions challenging the ’015 patent and the petition in IPR2024-00420 second. Notice 1. As is discussed in our separate decision in IPR2024-00420, entered concurrently, we have discretion to deny a parallel petition under 35 U.S.C. § 314(a). In view of Petitioner’s ranking and our assessment of the 1 Those ten additional petitions are the following: IPR2024-00413, IPR2024-00414, IPR2024-00415, IPR2024-00416, IPR2024-00417, IPR2024-00418, IPR2024-00421, IPR2024-00422, IPR2021-00423, and IPR2024-00424. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. issue in our institution decision in IPR2024-00420.” slip op. at 3
- Other 314aDecided for petitioner
“violate[s] the ‘particularity requirement of 35 U.S.C. § 312(A)(3).” Prelim. Resp. 8–13. Patent Owner cites the Petition’s eleven grounds based on nine “express” prior art references and 33 other “shadow”9 references and exhibits. Id. at 10–11. Patent Owner asserts that “it is unclear which references Petitioner intends to be (or not to be) part of each of the grounds in its Petition.” Id. at 12. Patent Owner complains about the length of the petition and accompanying declarations. Id. (“The Petition itself is seventynine pages long (13,850 words), and attaches fifty-six exhibits. One of those exhibits is a 349 page declaration from one of Petitioner’s experts.”) (citations omitted). Patent Owner cites the Board’s informative decision in Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 at 24 (PTAB Mar. 6, 2019). We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation 8 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 9 Patent Owner explains that these are exhibits “attached to the Petition and expressly cited and relied upon by Petitioner’s experts.” Prelim. Resp. 11. particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the Petition in this case could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“institution, Petitioner establishes sufficiently that the combination of Baig, Banga507, Banga690, and McFarland teaches or suggests each of the limitations recited in independent claim 1, and that it would have been obvious to combine the teachings of those references. See Pet. 9–38. Petitioner asserts that “[a person of ordinary skill] would have been motivated and would have found it obvious to incorporate these teachings of Banga507, Banga690, and McFarland in Baig’s system to select targeted advertisements for groups of users demonstrating a pattern of accessing the Internet from a shared AP (e.g., at a coffee shop every Sunday) based on the group members’ collective preferences because doing so would have allowed Baig’s modified system to advantageously improve the relevance of the targeted advertisements provided to the group members.” Id. at 12 (citing Ex. 1007 ¶ 39; Ex. 1015 ¶ 54; Lett Decl. ¶¶ 142–146). Petitioner presents an element-by element analysis supported by expert testimony. Id. at 15–30; Lett Decl. ¶¶ 151–237. At this stage, Patent Owner does not address the merits of Petitioner’s challenge.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,564,015 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00459 · APJ James P Calve · IPR · Final written decision
Claims 1–7 and 10–31 are unpatentable under §103 over the asserted combinations involving Chandra or Keohane.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 3. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent, but our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“claims 1, 15, 21, and 27 recite methods in which a first network security appliance of a CSF receives network traffic to inspect, determines whether the traffic was transmitted from a second network security appliance that executed security operations on the traffic, determines network security operations for the first network security appliance to execute based on any security operations executed by the second network security appliance, and executes operations on the traffic. Ex. 1001, 10:58–11:17, 12:31–60, 13:20– 47, 14:13–37. As claimed, network traffic may travel in one direction from a second network security appliance to a first network security appliance. The ’825 patent describes unidirectional traffic as “one embodiment” of the CSF. A first network security appliance receives incoming network traffic and determines if the incoming network traffic is transmitted from a second network security appliance based on the source address of the traffic and determines operations that the second network security appliance executed. Ex. 1001, 2:48–56. In this embodiment, traffic travels in a single incoming direction between network security appliances. Tr. 30:22–31:18. The ’825 patent also describes the “cooperation” in a CSF as “[t]he network packet carrying the flag is transmitted to another member node at the next hop.” Ex. 1001, 6:28–34 (emphasis added); id. at 8:3–8. Traffic always flows from one hop to a next hop along the same path between root 220 at the edge of the network and each particular endpoint (leaf) shown in Figure 2 below. Traffic does not flow along different interconnected paths when it travels from root 220 to an endpoint leaf 240a–240d, 250 as Patent Owner asserts is required of a CSF. PO Resp. 13–15. Figure 2 is “an exemplary topology of a cooperative security fabric (CSF)” with Patent Owner’s annotation of network traffic paths. Ex. 1001, 2:29–31; PO Resp. 16. Traffic travels along a single path from root 220 to branch 230a to leaf 240a to the blue end node. Traffic travels along a single path from root 220 to leaf 250 to the red end node. Traffic from the green node travels along a single path to leaf 240d to branch 230b to root 220. Network security appliances only cooperate along a single red, green,” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“(3) Analysis We agree with Petitioner that “the claims only require two appliances and traffic to go from one appliance to the other.” Reply 11. Nothing in the claims or element 1[a] requires network traffic to originate from outside the private network or the CSF. Dr. Black testifies that the background of the ’825 patent describes a need for a CSF to coordinate operations performed on network traffic that is “transmitted to/from the network” to avoid or reduce redundant operations among members of the CSF” (Ex. 2004 ¶¶ 44, 50), but Dr. Black describes the claimed network fabric and CSF entirely in the context of controlling network traffic transmitted within the enterprise network topology 200 as illustrated in Figure 2 of the ’825 patent (id. ¶ 52), which we discussed in Section II.B.1. supra and reproduce again below. In Figure 2, Patent Owner annotates paths taken by network traffic within network topology 200 comprising root 220, branches 230a, 230b, and leaves 240a–d, 250 within network 200. PO Resp. 16–17; Ex. 2004 ¶ 52. In addition, Chandra’s network 102 is “a collection of individual networks, interconnected with each other and functioning as a single large network.”7 Ex. 1004 ¶ 21. Network 102 can include LANs, WANs, and/or MANs. Id. As a result, network devices 104 located in different networks of network 102 transmit to one another via edge network links 218 within this internetwork of networks 102. Id. ¶¶ 8, 9, 21–30, Figs. 1, 2; Pet. 22–26. Transmitting and receiving CEs 208, 214 are security-based devices at the edges of different networks in network 102 to control incoming network traffic sent between transmitting and receiving network devices 206, 212 located in different networks. Ex. 1004 ¶ 30. A plurality of CEs can be associated with a single PE to receive incoming network traffic from a transmitting CE. Ex. 1004 ¶ 28. Thus, network traffic is transmitted from network devices 104 connected to a plurality of CEs that connect to other CEs via edge network link 218 and to other network devices 104 connected to those CEs “along multiple interconnected paths” (see id. ¶¶ 28–30) that satisfies Patent Owner’s definition of CSF (PO Resp. 13). The sending and receiving CEs “constitute multiple cooperating network security appliances” contrary to Patent Owner’s arguments (PO Resp. 38), as do CEs 208, 214.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Buruganahalli’s topology of devices 50, 52, 54 coordinates security operations that they perform on network data 58 sent from network device 54 to network device 52 to network device 50 from one hop to the next hop. Ex. 1005 ¶¶ 30–32, 34–36, 38–40, 46–48, Fig. 3. We agree with Petitioner that it would have been obvious to update Chandra’s metadata tag for a multi-CE path to indicate actions taken, as Buruganahalli teaches, to reduce latency and resource waste. Pet. 53–54 (citing Ex. 1002 ¶¶ 122, 125 (citing Ex. 1004 ¶ 28)). Dr. Franz testifies it would have been obvious to arrange Chandra’s different network security appliance CEs in series so that traffic passed through multiple CEs that performed different security functions in a CSF before reaching a receiving PE, as Chandra and Buruganahalli teach or suggest. Ex. 1019 ¶ 60 (citing Ex. 1004 ¶¶ 28, 30; Ex. 1002 ¶¶ 122, 125). Patent Owner’s argument that the CEs are not in series does not address Petitioner’s contention that it would have been obvious to place them in series, as Buruganahalli discloses, to perform different security operations on network traffic. Pet. 54; Ex. 1019 ¶ 60; Cf. Sur-reply 20–21. Petitioner contends that Chandra’s system also transmits data packets with updated labels to devices in an extended virtual private network (VPN) shown in Figure 8. Pet. 54. Petitioner asserts it was well known to connect a private network of a remote company site to another network such as an enterprise network using a VPN tunnel, and it would have been obvious to attach the VPN in Figure 8 to a private network as an extension of Figure 2’s private network. Pet. 54–56. Petitioner contends that, in such instances, a receiving CE would transmit data packets with the updated label to a receiving device in an extended network using the transmitting and receiving end configurations shown in Figures 2 and 8 of Chandra. Id. at 54. We agree with Petitioner that a skilled artisan would have been motivated to connect Chandra’s Figure 2 private network to Chandra’s Figure 8 VPN network to extend enterprise network communications so the next device in the extended VPN network would be “a next network appliance participating in the CSF” as claimed. Pet. 54–56; Reply 26–27 (citing Ex. 1019 ¶ 61). We also agree with Dr. Franz who testifies: Contrary to the PO’s assertion that “Petitioner…provides no rationale for why a POSITA would modify Chandra by combining Figures 2 and 8, or explain why a POSITA would reasonably expect it to succeed (POR, 45),” I provided ample reasons why a POSITA would have found it obvious that the VPN in Chandra’s Figure 8 could be attached as an extension to the private network in Chandra’s Figure 2 as illustrated below. In fact, I provided an example of a widely circulated official publication by the U.S. National Security Agency containing a reference architecture that recommended cascading multiple VPN solutions for added security. (Franz. Decl. ¶126-130.) Ex. 1019 ¶ 62 (citing Ex. 1002 ¶¶ 126–130).” slip op. at 30
Patent outcomesUS 10,084,825 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,084,825 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Aug 12, 2024 · IPR2023-00458 · APJ James P Calve · IPR · Final written decision
Claims 1–3, 6, 8–17, and 21–27 are unpatentable under § 103 over the five asserted combinations of prior art.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Final Written Decision under 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020) as to the patentability of the claims on which we instituted trial. Petitioner bears the burden of proving unpatentability of the challenged claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). For reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 8–17, and 21–27 of the ’678 patent are unpatentable.” slip op. at 2
- Skill levelOther
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 16–17 (the positions in the PO Response would be the same under either parties’ proposal). The parties’ proposals are substantially the same. Our decision and analysis would be the same under either party’s proposal.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“c. Analysis The ’678 patent describes storage containers as “directories, directory structures, web directories, folders, . . . files and namespaces of the same.” Id. at 6:44–47; id. at 10:12–15. However, it discloses that data is “stored in the namespaces, directories, folders, files or other storage containers of one or more cloud platforms,” which seems to equate namespaces with storage containers. Id. at 9:23–25. In claim 6, “the step of configuring the namespaces comprises storing content of the file as filenames.” Id. at 20:20–22. One definition of “namespace” is a “grouping of one or more names that represent individual objects within the group in a shared computing environment, such as a network.” Microsoft Computer Dictionary, Fifth Edition 130 (Microsoft Press 2002) (Ex. 3001). “The names within a namespace are unique, are created according to the same rules, and can be resolved into a particular identifying item of information, such as an IP address or a network device.” Ex. 3001.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“set of names available for naming things.’” Reply 1 (citing Ex. 1002 ¶ 101; Ex. 1014 (Dictionary of Computer and Internet Terms)); Tr. 5:18–20, 7:21– 8:1. This definition is consistent with the extrinsic evidence cited above. Patent Owner largely agrees with this proposed definition. Dr. Black testifies that “to the extent a namespace is applied to object identifiers, it will define the set of allowable identifiers within a particular context.” Ex. 2003 ¶ 69 (cited in PO Resp. 19). Dr. Black agrees with Dr. Lee’s testimony “that a directory named ‘documents’ is a namespace for the files within that directory––within that ‘documents’ namespace, files can be identified by simply referring to the file name, such as ‘foo.’” Id. ¶ 68. Patent Owner however, asserts that “a name itself (such as an identifier that identifies an object) is not a namespace.” PO Resp. 19. Patent Owner asserts that the ’678 patent provides “an example of creating a namespace for file chunks as part of the encryption process” as “each chunk can be encrypted based on public and private/secret keys defined by the encryption module 210” “where keys are managed based on user-assigned policies.” PO Resp. 20. Patent Owner asserts that “[t]hese policies therefore create a namespace that defines the naming convention for the file chunks (e.g. encryption based on a particular key).” Id. Patent Owner asserts that “storing the file chunks in a folder creates a namespace scope for the file chunks” and namespaces are configured by storing file content as file names. Id. (citing Ex. 2003 ¶ 71); see Tr. 8:5–11, 11:2–12:11. d. Conclusion In view of the foregoing, we adopt Petitioner’s proposed interpretation of “namespace” as “a set of names available for naming things.” Consistent with various exemplary embodiments described in the ’678 patent, the set of names available for naming things may be based on a policy that defines the naming convention for files or file chunks, and a namespace may be created by storing files or file chunks in a folder to create a namespace scope for the files or file chunks.” slip op. at 8
Patent outcomesUS 9,280,678 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,280,678
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.