• Google LLC v. Proxense, LLCInstituted
  PTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution

  Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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 explained below, we institute an inter partes review of the ’730 patent.” slip op. at 2

  • Prior constructionPrior construction adoptedDecided for patent owner

    “third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11

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

    “2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,352,730
• Google LLC v. Proxense, LLCInstituted
  PTAB · Jul 24, 2024 · IPR2024-00233 · APJ David C Mckone · IPR · Institution

  The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 based on a reasonable likelihood of prevailing on obviousness grounds over Ludtke or Ludtke and Kon.

  RulingsInstitution decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority,” or “third party that operates a trusted authority,” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’954 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:5–17, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’954 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:37–51, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:30–33) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 7:27–59, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, are presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third party that operates a trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third party that operates a trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10

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

    “2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13

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

    “Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 63–67 (citing Ex. 1006 ¶¶ 194, 234, 241, 265–266, Figs. 5, 9; Ex. 1003 ¶¶ 184–185). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 68 (citing Ex. 1003 ¶¶ 186–187). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claims 10 and 13. Pet. 69 (citing Ex. 1003 ¶ 188). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Graham
  Patents in suitUS 8,886,954
• Google LLC v. Proxense, LLCInstituted
  PTAB · Jul 23, 2024 · IPR2024-00234 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR on claims 1–7 and 9–18 based on the asserted obviousness grounds over Ludtke and Ludtke with Kon.

  RulingsInstitution decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:8–20, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, the parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’905 Patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:39–53, Figs. 3–4. However, despite trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:33–36) refers to an agent’s relationship to the principal parties to the transaction, not to level of activity the agent engages in. See id. at 7:30–642, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, is presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (“The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third-party trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third-party trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10

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

    “2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4–5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. See Prelim. Resp. Based on the record presented, including our review of the ’905 Patent and the types of problems and solutions described in the ’905 Patent and cited prior art, we adopt Petitioner’s definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 13

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

    “Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 43–46 (citing Ex. 1006 ¶¶ 194, 234, 241, 264–265, Figs. 5, 9; Ex. 1003 ¶¶ 66–70). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 50 (citing Ex. 1003 ¶¶ 152–153). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claim 11. Id. at 51 (citing Ex. 1003 ¶ 155). Patent Owner does not yet provide separate arguments for claims 2 and 11. See Prelim. Resp. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 2 and 11, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 26

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,298,905
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Jul 22, 2024 · IPR2023-01329 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious over Law; the Board did not reach the additional grounds based on Wood or Jungck.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack.” Pet. 8 (citing Ex. 1003 ¶ 33). Patent Owner cites to the ’1154 decision, and that panel’s assertion regarding the level of ordinary skill in the art, stating it is the level that it adopts. PO Resp. 6 (citing Ex. 2012 ¶¶ 25–30). Reviewing both statements, we determine no substantive differences between the two, and continue to adopt the level adopted in the Decision to Institute. See Dec. to Inst. 12–13.” slip op. at 7

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

    “Patent Owner argues that the preambles of independent claims 1, 8, and 15 should be found to be limiting because those preambles provide antecedent basis for multiple limitations recited later in the claims, and because the limitations in the preambles “give life, meaning, and vitality” to the claims. PO Resp. 6–7 (citing Ex. 2012 ¶¶ 38–39; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Per the Institution Decision, we continue to find the preambles of the independent claims to be limiting. See Dec. to Inst. 14.” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. A review of the ’266 Patent does not show the disclosure of “initial dynamic security policy,” or equivalent, and the cited sections (Ex. 1001, 14:13–31) also do not discuss such extra limitations. The ’266 Patent provides: Security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more packet security gateways within network environment 100. … For example, security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more of packet security gateways 112, 114, 116, and 118 on a periodic basis, under specified network conditions, whenever security policy management server 120 receives a new dynamic security policy, whenever a dynamic security policy stored on security policy management server 120 is changed or altered, or in response to a request from one or more of packet security gateways 112, 114, 116, and 118. Ex. 1001, 13:35–50 (emphasis added). Per this disclosure, the PSGs may receive multiple DSPs from the SPMS, with different PSGs receiving different DSPs. This disclosure undercuts the argument that the first set of packet filtering rules needs to be an initial set. We also disagree that this would require the PSGs to produce DSPs; rather, the SPMS would still create and update the DSPs, on an on-going basis, such that a second set can be updated by third set, with that second set being an initial set with respect to the third set, etc. Additionally, the structure of independent claim 1, for example, is directed to a method of filtering packets, such that the claim may read upon a network environment where the plurality of PSGs already contain a DSP, application of another DSP with a first set of packet rules, that are subsequently updated. As such, we are unpersuaded that the implicit claim construction determined in the Institution Decision was incorrect and not in keeping with the language of the claim and the scope of the disclosure of the ’266 Patent.” slip op. at 10

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

    “Patent Owner also cites claim constructions that have been adopted in previous IPR proceedings (PO Resp. 12–13), but asserts that “these proceedings do not turn on these constructions, and thus these constructions are not necessary. Id. (citing See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner with respect to the additional listed claim limitations and determine that no other claim terms need to be construed expressly for purposes of this Decision.” slip op. at 11

  Patent outcomesUS 10,785,266 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,785,266
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Jul 22, 2024 · IPR2023-00445 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious over Law; the Board did not reach the additional grounds based on Wood or Jungck.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack.” Pet. 8 (citing Ex. 1003 ¶ 33). Patent Owner cites to the ’1154 decision, and that panel’s assertion regarding the level of ordinary skill in the art, stating it is the level that it adopts. PO Resp. 6 (citing Ex. 2012 ¶¶ 25–30). Reviewing both statements, we determine no substantive differences between the two, and continue to adopt the level adopted in the Decision to Institute. See Dec. to Inst. 12–13.” slip op. at 7

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

    “Patent Owner argues that the preambles of independent claims 1, 8, and 15 should be found to be limiting because those preambles provide antecedent basis for multiple limitations recited later in the claims, and because the limitations in the preambles “give life, meaning, and vitality” to the claims. PO Resp. 6–7 (citing Ex. 2012 ¶¶ 38–39; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). Per the Institution Decision, we continue to find the preambles of the independent claims to be limiting. See Dec. to Inst. 14.” slip op. at 8

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

    “We are not persuaded by Patent Owner’s arguments. A review of the ’266 Patent does not show the disclosure of “initial dynamic security policy,” or equivalent, and the cited sections (Ex. 1001, 14:13–31) also do not discuss such extra limitations. The ’266 Patent provides: Security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more packet security gateways within network environment 100. … For example, security policy management server 120 may be configured to communicate one or more dynamic security policies to one or more of packet security gateways 112, 114, 116, and 118 on a periodic basis, under specified network conditions, whenever security policy management server 120 receives a new dynamic security policy, whenever a dynamic security policy stored on security policy management server 120 is changed or altered, or in response to a request from one or more of packet security gateways 112, 114, 116, and 118. Ex. 1001, 13:35–50 (emphasis added). Per this disclosure, the PSGs may receive multiple DSPs from the SPMS, with different PSGs receiving different DSPs. This disclosure undercuts the argument that the first set of packet filtering rules needs to be an initial set. We also disagree that this would require the PSGs to produce DSPs; rather, the SPMS would still create and update the DSPs, on an on-going basis, such that a second set can be updated by third set, with that second set being an initial set with respect to the third set, etc. Additionally, the structure of independent claim 1, for example, is directed to a method of filtering packets, such that the claim may read upon a network environment where the plurality of PSGs already contain a DSP, application of another DSP with a first set of packet rules, that are subsequently updated. As such, we are unpersuaded that the implicit claim construction determined in the Institution Decision was incorrect and not in keeping with the language of the claim and the scope of the disclosure of the ’266 Patent.” slip op. at 10

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

    “Patent Owner also cites claim constructions that have been adopted in previous IPR proceedings (PO Resp. 12–13), but asserts that “these proceedings do not turn on these constructions, and thus these constructions are not necessary. Id. (citing See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Patent Owner with respect to the additional listed claim limitations and determine that no other claim terms need to be construed expressly for purposes of this Decision.” slip op. at 11

  Patent outcomesUS 10,785,266 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,785,266
• Unified Patents, LLC v. Dynapass IP Holdings LLCSome claims unpatentable
  PTAB · Jul 12, 2024 · IPR2023-00425 · APJ Lynne H Browne · IPR · Final written decision

  Claim 5 is unpatentable as obvious over Veneklase and Jonsson; claims 1, 3, 4, and 6 were not shown unpatentable over Kew and Sormunen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 12

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

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that “all terms should be given their plain meaning.” Pet. 6. Yet, Petitioner proposes claim construction for “cell phone network” and “[n]ot known to the user.” Pet. 9–13.7 As these terms are not in controversy, we do not construe them.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that it is too late for Petitioner to file a copy of the infringement contentions and argue that Patent Owner’s position in this Proceeding is inconsistent with its position in that proceeding. Petitioner had ample opportunity to raise its arguments about the infringement contentions well before the oral hearing. PO Resp. to Supp. 2. Patent Owner complied with our mandatory notice provision. Further, we agree with Patent Owner that its position in the infringement contentions is not inconsistent with its position in this proceeding. Paper 3, 1. For these reasons, we decline to exercise our authority under 37 C.F.R. § 42.5(b) to consider the infringement contentions and the new arguments during an oral hearing.” slip op. at 10

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

    “Ex. 1005, 7:16–28. We do not agree with Patent Owner that these statements unequivocally support its position that Veneklase’s two-step authentication process is a principle of operation of its system. Rather, the quoted statements indicate that Veneklase’s use of two distinct communication channels and a random number generator are key features of Veneklase’s system that provide multiple levels of security and enhance security of that system. As modified Veneklase’s system still uses two distinct communication channels and a random number generator. Thus, to the extent that Veneklase’s enhanced security measures (i.e. two distinct communication channels and a random number generator) are a principle of operation of Veneklase’s system, the proposed modification does not destroy this principle of operation or render Veneklase’s system inoperable. Moreover, incorporating Jonsson’s teachings related to using an algorithm to create a new password would not destroy the principle of operation of Veneklase’s security system because it only changes how Veneklase accomplishes its goal of preventing unauthorized access to a computer system, rather than defeating its goal of preventing such access. See In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir. 2012). Further, we do not agree that Plas-Pak (a routine decision11) supports Patent Owner’s contention that the proposed combination impermissibly changes Veneklase’s principle of operation as Patent Owner has not identified differences between the two authentication processes that would be “unlikely to motivate a person of ordinary skill to pursue” the proposed combination. Plas-Plak, 600 F. App'x at 757-59.” slip op. at 25

  Patent outcomesUS 6,993,658 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,993,658
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; claims 1, 2, 4, 6–9, 11, 24, and 29 were not shown unpatentable, principally because the asserted combinations did not establish the claimed …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8

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

    “Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. We conclude that no terms require express construction to resolve a dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (internal citation omitted)).” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our Decision to Institute, we understood Petitioner’s theory based on the combination of Smyth and Mozer to include fabricating an integrated circuit in stating that we were sufficiently persuaded “that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory . . . was within the level of ordinary skill.” Dec. 23. Our understanding was based on the Petition’s multiple contentions that a person of ordinary skill would have found it obvious to fabricate Smyth’s processor and state memory on a single integrated circuit. See Pet. 41–44. For example, the Petition contends that “[a] POSITA would have found it obvious . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 41–42 (emphasis added)); “a POSITA would have understood and found obvious . . . to fabricate a calculating apparatus and acoustic model memory on a single integrated circuit” (Pet. 42 (emphasis added)); “[s]uch a use of a known technique of fabricating a memory and processor on a single integrated circuit” (id. (emphasis added)); “it would have been obvious to modify Smyth to form the classifier processor and associated memory on a single IC” (Pet. 43 (emphasis added)); (“it was well known in the prior art to fabricate a single integrated circuit” (Pet. 43–44 (emphasis added)); “[t]hus, a POSITA would have been motivated . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 44 (emphasis added)). integrated circuit to using integrated circuits that were already fabricated. Reply 22–25. According to Petitioner, “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a POSITA modifying Smyth according to Mozer’s undisputed teachings of a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Id. at 23–24. However, as discussed in the previous paragraph, when discussing the combination of a processor and an acoustic model memory on an integrated circuit, the Petition used the verb “to fabricate” four times in the future tense and once in the present tense, as well as the verb “to form” once in the future tense. The Petition did not use the past tense phrase “were already fabricated” as alleged in the Reply. Moreover, the Petition did not map Smyth’s state memory (which the Petition contends teaches the claimed “acoustic model memory” (see Pet. 11)) to a memory already fabricated on an integrated circuit in the prior art. Rather, the Petition relied on Mozer to support its contention that a person of ordinary skill would have fabricated the calculating apparatus and acoustic model memory of Smyth on an integrated circuit. See Pet. 42, 44. The Petition cited Boike and Ozcelik in contending that fabricating an integrated circuit with processors and memories was well known, and cited Toyoda in contending that fabricating an integrated circuit with a calculating apparatus and an acoustic model memory was well known. Pet. 43–44 (citing Ex. 1006; Ex. 1029; Ex. 1034). However, the Petition did not explain how a memory located in one of the integrated circuits of Mozer, Boike, Ozcelik, or Toyoda would have been able to store Smyth’s state memory. Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”).” slip op. at 27

  Patent outcomesUS 10,839,789 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,839,789
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01193 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 4, 5, 7, 9, 10, 12, and 14–16 are unpatentable as obvious under § 103(a) over the listed Jiang-based combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with . . . two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with . . . four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). Zentian does not contest Apple’s proposed definition of the level of ordinary skill. PO Resp. 5. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–8:10.” slip op. at 7

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

    “Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian does not contest these arguments or propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive that a person of ordinary skill in the art would have understood Jiang’s pruning technique not to rely on feedback, particularly because Jiang makes no mention of feedback, and Jiang as a whole appears consistent with Apple’s theory that Jiang does not teach feedback-based pruning. See, e.g., Ex. 1004, 2:5–7, 8:52–64, 10:65– 11:15. We credit Mr. Schmandt’s testimony and supporting evidence that “[e]ven though Jiang still describes calculating all scores initially (for each state for example), Jiang explains that pruning thereafter saves on computational resources.” Ex. 1003 ¶ 194 (citing Ex. 1004, 10:65–11:25). We find this testimony more persuasive than Mr. Anderson’s contrary testimony which does not credibly find support in the text of Jiang. See Ex. 2020 ¶¶ 57–71. We also disagree that Apple’s arguments that Jiang’s distance calculations do not rely on pruning are untimely. PO Resp. 19. The Petition argues that Jiang teaches calculating distances, “namely a score for each phoneme branch of the prefix tree.” Pet. 21 (citing Ex. 1004, 8:29–33). Also, Mr. Schmandt clearly opined, in his initial declaration submitted with the Petition, that “each phoneme branch is scored” in Jiang’s search tree. Ex. 1003 ¶ 149. Thus, Zentian had clear notice in the Petition of Apple’s argument that Jiang performs distance calculations for the entire search tree. Apple’s later argument that this process does not necessitate feedback is a natural consequence of its argument in the Petition, and is not untimely.” slip op. at 27

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

    “(1) Apple’s Proposed Combination According to Apple, Brown teaches that processing stages in a speech-recognition system may be pipelined such that “as the frames of data are generated, the data is processed from one stage to another so that the operations are synchronized with the rate of frame generation.” Pet. 44–45 (citing Ex. 1036, 3:32–48; Ex. 1003 ¶¶ 206–209). Apple contends that a person of ordinary skill in the art would have had reason to modify the combination of Jiang and Baumgartner by pipelining data sent from the CPU to the SLA and then back to the CPU because “[p]ipelining data offered numerous well-known advantages including greater throughput of the processor, improved performance, decreased cost, and simplified programming.” Pet. 45 (citing Ex. 1003 ¶ 210). Apple also argues that a person of ordinary skill in the art “would have realized pipelining keeps all processors operating efficiently in a multi-processor system, such that wasteful idle-processing time is minimized.” Pet. 46 (citing Ex. 1003 ¶¶ 212–213). And according to Apple, “Jiang already discusses the importance of time with respect to pruning.” Pet. 46 (citing Ex. 1004, 10:65– 11:25). Apple also argues that a person of ordinary skill in the art would have had a reasonable expectation of success in adding Brown’s pipelining to the Jiang–Baumgartner combination because “[p]ipelining was well-known in the art including in speech recognition systems,” and the three references “teach speech recognition systems using similar hardware, such as various processors to perform similar speech recognition functions,” such that the combination “would have been a trivial modification.” Pet. 46–47 (citing Ex. 1004, 4:60–65, 6:32–36, 6:39–42; Ex. 1007 ¶ 33, Fig. 19; Ex. 1036, 3:11– 15; Ex. 1003 ¶ 214).” slip op. at 21

  Patent outcomesUS 7,979,277 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,277
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00034 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 4, 5, 7, 9, 10, 12, and 14–16 are unpatentable as obvious under § 103(a) over the identified combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Mr. Schmandt’s testimony, Apple argues that a person of ordinary skill in the art would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with . . . two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with . . . four years of experience in the field of speech recognition.” Pet. 3 (citing Ex. 1003 ¶¶ 28–30). Zentian does not contest Apple’s proposed definition of the level of ordinary skill. PO Resp. 5. Because Apple’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’277 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–8:10.” slip op. at 7

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

    “Apple argues that all terms should be given their plain and ordinary meaning, except that the limitation “calculating means for calculating a distance indicating the similarity between a feature vector and a predetermined acoustic state of an acoustic model” in claim 14 (Ex. 1001, 39:6–8) is a means-plus-function limitation and thus invokes 35 U.S.C. § 112 para. 6 (2006). Pet. 5–6. Zentian does not contest these arguments or propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We find Apple’s arguments persuasive that pruning is not required as part of its proposed combination of Jiang, Baumgartner, and Brown. Nothing in Jiang suggests that pruning is mandatory—it is presented as option, possibly a preferred option, but not a requirement. See Ex. 1004, 8:52 (“[A] pruning technique can be used.” (emphasis added)). Although Apple relied on the possibility of pruning in Jiang as part of the motivation to combine Jiang’s system with Baumgartner’s parallel-processing hardware, Apple never included pruning as an element needed to meet any limitation of claim 1. See Pet. 41, 46; Ex. 1003 ¶¶ 194, 201, 213. Although Jiang teaches the desirability of using pruning, at least “for a large vocabulary” (Ex. 1004, 2:19), there is nothing in claim 1 limiting how small the acoustic model can be. Also, whether or not a person of ordinary skill in the art could have achieved real-time speech-recognition system without pruning is not pertinent to achieving the claimed invention because claim 1 does not require real-time speech recognition. Apple has persuasively shown that a person of ordinary skill in the art would have had reason to implement Jiang’s system on parallel-processing hardware, as Baumgartner teaches, using pipelining as Brown teaches to meet all the limitations of claim 1, even without Jiang’s pruning embodiment, and that this combination would have been within the ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive that a person of ordinary skill in the art would have understood Jiang’s pruning technique not to rely on feedback, particularly because Jiang makes no mention of feedback, and Jiang as a whole appears consistent with Apple’s theory that Jiang does not teach feedback-based pruning. See, e.g., Ex. 1004, 2:5–7, 8:52–64, 10:65– 11:15. We credit Mr. Schmandt’s testimony and supporting evidence that “[e]ven though Jiang still describes calculating all scores initially (for each state for example), Jiang explains that pruning thereafter saves on computational resources.” Ex. 1003 ¶ 194 (citing Ex. 1004, 10:65–11:25). We find this testimony more persuasive than Mr. Anderson’s contrary testimony which does not credibly find support in the text of Jiang. See Ex. 2020 ¶¶ 57–71. We also disagree that Apple’s arguments that Jiang’s distance calculations do not rely on pruning are untimely. PO Resp. 19. The Petition argues that Jiang teaches calculating distances, “namely a score for each phoneme branch of the prefix tree.” Pet. 21 (citing Ex. 1004, 8:29–33). Also, Mr. Schmandt clearly opined, in his initial declaration submitted with the Petition, that “each phoneme branch is scored” in Jiang’s search tree. Ex. 1003 ¶ 149. Thus, Zentian had clear notice in the Petition of Apple’s argument that Jiang performs distance calculations for the entire search tree. Apple’s later argument that this process does not necessitate feedback is a natural consequence of its argument in the Petition, and is not untimely.” slip op. at 27

  Patent outcomesUS 7,979,277 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,277
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedAll claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01192 · APJ Christopher L Ogden · IPR · Final written decision

  The Board held claims 46–51, 53, 54, 58, 59, 64, and 67 unpatentable as obvious under § 103 over the specified combinations of Thelen, Bailey, Chen, and additional references.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “We find Apple’s arguments persuasive notwithstanding Zentian’s arguments to the contrary. We credit Mr. Schmandt’s testimony that consolidating the overlapping data within similar lexical models (such as “sports” models like football or baseball) and storing the consolidated data in a shared memory that multiple processors may access in parallel would have resulted in memory and processing efficiency. Ex. 1003 ¶¶ 83–84. This would have been an improvement over Thelen, where each processor has access to only one, distinct lexical model at a time and there is no shared memory in which multiple processors can access the same consolidated models data in parallel. See Ex. 1030, 7:30–34.11” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Because a person of ordinary skill in the art is a hypothetical person, we agree with Apple that Dr. Anderson’s inability to implement a particular computer vision application within the constraints of a particular Texas Instruments parallel-processing environment does not mean that more general knowledge and skill in parallel processing would have been beyond the level of ordinary skill. To the contrary, the evidence of record suggests that a person of ordinary skill in the art at the time of the claimed invention, who, for example, had a master’s degree and two years of experience in the field of speech recognition, would have also had knowledge and experience with parallel processing.” slip op. at 9

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

    “Apple states that it “applies the plain and ordinary meaning of all claim terms,” and does not propose any explicit constructions. See Pet. 7. Likewise, Zentian does not propose any explicit constructions. See PO Resp. We do not find it necessary to explicitly construe any terms for this decision. To the extent that we need to interpret claim language, we address that language below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “would not have been dissuaded from the memory-efficiency benefits of modifying Thelen–Bailey by grouping processors and memory into clusters because memory collisions would have allegedly made recognition slower. Although memory collisions may have been an issue for the ordinarily skilled artisan to consider, Apple has persuasively shown that there are other motivating considerations, such as the known flexibility12 and scalability of distributed processing systems in general, decreased cost because off-the-shelf components may be used, and the added efficiency of data sharing among related sub-context models. See Pet. 40–45. Apple persuasively shows, and we find Mr. Schmandt’s supporting testimony credible, that a skilled artisan would have expected to be able to minimize the effect of memory collisions based on Chen’s teachings and the background knowledge in the art. See Pet. 14–19. For the same reasons, we do not find credible Dr. Anderson’s testimony (see, e.g., Ex. 2020 ¶¶ 44–46)” slip op. at 28

  Patent outcomesUS 7,587,319 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,587,319

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.