• Juniper Networks, Inc. v. Portsmouth Network Corp.All claims unpatentable
  PTAB · Dec 9, 2025 · IPR2024-00893 · APJ Justin T Arbes · IPR · Final written decision

  Claims 3, 8, 11, 12, 15, 20, 23, and 24 are unpatentable as obvious over Gai and IEEE 1999.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the application for the ’986 patent (January 2002), a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or a related field, plus at least two years of industry experience or graduate-level academic experience with computer networking.” Pet. 20. In the Decision on Institution, the Board agreed with and applied Petitioner’s proposed definition, removing the phrase “at least” to avoid unnecessary ambiguity. Dec. on Inst. 18–19. Patent Owner uses Petitioner’s proposed definition for its Response. PO Resp. 5. Neither party made any further argument regarding the level of ordinary skill in the art in its papers during trial. In the Cisco IPR, we adopted a similar definition, determining that a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or in an equivalent field, or approximately two years of experience working in the field of information technology and networking,” where “[l]ack of professional experience can be substituted by additional education, and vice versa.” IPR2024-00505, Paper 29 at 10–11 (alteration in original); see Dec. on Inst. 19 n.7 (noting the proposed definition in the Cisco IPR). Based on the full record developed during trial, including our review of the ’986 patent and the types of problems and solutions described in the ’986 patent and cited prior art, we adopt the same definition of the level of ordinary skill in the art as the Cisco IPR and apply it for purposes of this Petitioner’s similar proposed definition in this proceeding.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Gai discloses entering an Enable_Uplinkfast command at an access switch (e.g., access switch 114) to block a failed port (e.g., the root port) and configure the access switch to send dummy traffic upstream through a new active port. . . . When modified in view of IEEE 1999’s disclosure that self-healing network traffic can advantageously be sent both upstream and downstream, the command would be entered at a backbone switch (e.g., backbone switch 122) to block a failed port (e.g., a designated port connected to access switch 114) and configure the backbone switch to send dummy traffic downstream to an access switch (e.g. access switch 114) through a new active port. While Gai uses its protocol signaling command, Enable_Uplinkfast, to send dummy traffic through a new root port, [a person of ordinary skill in the art] would deem it an obvious implementation detail to modify the parameters of the port on a backbone switch. See Ex. 1003 ¶ 139 (citing Ex. 1005, col. 6, ll. 39–46).” slip op. at 34

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In the Cisco IPR, we addressed four claim terms in the final written decision: “access switch” and “edge switch,” which appear in independent claims 1 and 13 and various dependent claims, and “downstream” and “upstream,” which appear in claims 11, 12, 23, and 24. IPR2024-00505, Paper 29 at 11–14. We interpreted “access switch” to mean “a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems,” interpreted “edge switch” to mean “a core switch that is directly connected to an access switch,” interpreted “downstream” to mean “away from the root switch,” and interpreted “upstream” to mean “toward the root switch.” Id. As noted above, Patent Owner did not appeal that decision. We incorporate herein our previous analysis in the Cisco IPR, but note that none of the analysis of the disputed issues below depends on such determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. 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.’” (emphasis added) (citation omitted)).” slip op. at 13

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

    “1999, supported by the testimony of Mr. McNair, which we credit, is persuasive. See Pet. 25–30, 40–46; Ex. 1003 ¶¶ 132–145, 165–174. Based on the full trial record, we find that Gai and IEEE 1999 teach limitation [1E] and that a person of ordinary skill in the art would have been motivated to combine their teachings in the manner described by Petitioner. Based on all of the evidence of record, we determine that Petitioner has proven, by a preponderance of the evidence, that claim 3 would have been obvious over Gai and IEEE 1999 under 35 U.S.C. § 103(a). 4. Claims 8, 15, and 20 Claim 8 depends indirectly from independent claim 1. Claims 15 and 20 depend indirectly from independent claim 13, which is similar to claim 1 but recites a network switching device rather than a method. As to independent claim 13, Patent Owner refers to its earlier arguments regarding claim 1, asserting that limitation [13C] is “substantially similar” to limitation [1E]. PO Resp. 14–15. We disagree with Patent Owner’s arguments for the reasons explained above. See supra Section II.D.3.b. Patent Owner does not argue dependent claims 8, 15, and 20 separately from their respective parent claims 1 and 13. See PO Resp. 19. We have reviewed Petitioner’s contentions and supporting evidence, including the testimony of Mr. McNair, and are persuaded that Petitioner has proven, by a preponderance of the evidence, that claims 8, 15, and 20 would have been obvious based on Gai and IEEE 1999 under 35 U.S.C. § 103(a), for the reasons stated by Petitioner. See Pet. 21–46, 48–52, 55–59; Ex. 1003 ¶¶ 113–175, 179–185, 194–203.” slip op. at 41

  Patent outcomesUS 6,917,986 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,917,986
• Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentable
  PTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28

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

    “standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15

  Patent outcomesUS 7,594,052 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,594,052
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01241 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 10–13, 19, 21, 23, and 33 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with Cohee added for claims 11, 13, 19, and 23.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner argues that a person of ordinary skill in the art “would have had a bachelor’s degree, or equivalent, in electrical engineering, computer science, or a related field, and 2–3 years of experience researching, designing, or developing content delivery systems and related hardware, software, and firmware, or equivalent experience.” Pet. 4 (citing Ex. 1008 ¶¶ 36–40). Patent Owner does not dispute this. See PO Resp. 3 (citing Ex. 2001 ¶ 22). Because it is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’427 patent, we adopt the above articulation of the level of ordinary skill for this decision.” slip op. at 12

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

    “We agree with Patent Owner that the term should be construed according to its ordinary and customary meaning, and that we need not construe the term explicitly because the meaning of the term is not relevant to the contested issues in the proceeding. 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))).” slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “Having considered all the evidence of record relating to Mr. Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the constructive reduction to practice that occurred on November 18, 2008. Therefore, we determine, by a preponderance of the evidence, that Ueda is prior art to the challenged claims.” slip op. at 24

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

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 33

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• Peloton Interactive, Inc. v. NEC CorporationAll claims unpatentable
  PTAB · Feb 5, 2025 · IPR2023-01240 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–9, 14–18, 20, 22, 32, and 34–36 are unpatentable as obvious over Ueda, the SIP Standard, and the SDP Standard, with dependent claims 2, 3, 15, and 17 also relying on Cohee.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “Taniguchi’s activities during the relevant time frame, we find that Patent Owner has not produced sufficient corroborating evidence to show that Mr. Taniguchi’s work on reducing to practice the claimed invention was reasonably continuous during the critical period between September 19, 2008 (the filing date of Ueda), and November 18, 2008 (the filing date of the Japanese patent application). Although there is corroborating evidence of diligence beginning on November 6, 2008, when Mr. Taniguchi transmitted a draft application to the Baba law firm, there is no evidence of any diligence prior to that date, other than Mr. Taniguchi’s own testimony. We do not agree with Patent Owner that the evidence of Mr. Taniguchi’s other activities for NEC, or research relating to IPTV, corroborate Mr. Taniguchi’s reduction to practice of the claimed invention. Although these activities may have something to do with the general subject matter of IPTV, Patent Owner has not shown any nexus between these activities and the challenged claims. See Naber v. Cricchi, 567 F.2d at 385 (“It is well settled that, to satisfy the ‘reasonable diligence’ requirement . . . , the work relied on must ordinarily be directly related to reduction to practice of the invention . . . in issue.” (citing cases)). Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008 (see Ex. 2017), there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November. Considering all the evidence as to Mr. Taniguchi’s activities, we find that Patent Owner has not met its burden of producing corroborating evidence that the named inventors of the ’427 patent exercised reasonably continuous diligence during the critical period when Ueda was filed until the” slip op. at 23

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

    “In general, we disagree with Patent Owner that, in showing a reason to incorporate the SIP Standard’s teachings about proxy servers, Petitioner must necessarily show that Ueda’s system was deficient or inferior. A patent challenger “does not need to show that there was a known problem with the prior art system in order to articulate the required rational underpinning for the proposed combination.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002–03 (Fed. Cir. 2016). Also, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. For this reason and the specific reasons discussed below, we find Patent Owner’s arguments unpersuasive. The evidence of record suggests that it would have been within the ordinary skill in the art to modify Ueda’s system by replacing direct communication between content-providing device 150 and servers 191 or 192 with an indirect connection in the form of proxy servers using well-known, predictable techniques as described in the SIP Standard.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “(4) Whether Ueda Teaches Away from Providing Play-list Information While Establishing a Connection Finally, Patent Owner argues that Ueda teaches away from providing “play-list information” at the same time as establishing a connection, because Ueda teaches successfully completing user authentication before transmitting the playlist. PO Resp. 52–53 (citing Ex. 1003 ¶¶ 56, 365, Fig. 25; Ex. 2001 ¶ 99). According to Patent Owner, “Petitioner’s argument fails to reconcile[] this ordering of Ueda, which would prevent implementation of the proposed combination with the SDP Standard, in which the playlist is transmitted as part of the ‘Session Initiation.’” Id. at 53 (citing Ex. 2001 ¶ 100). In its Reply, Petitioner argues that limitation 1g “does not require transmitting ‘play-list information’ ‘at the same time’ as authentication, but at a same time ‘the one or more connection control servers executes a process for guaranteeing a communication bandwidth . . . as a process for establishing the connection.’” Pet. Reply 23. Petitioner also argues that the ’427 patent also describes an authentication step before transmitting the play-list information. Id. (citing Ex. 1001, 12:56–13:13, 13:50–58, Fig. 4). We find Petitioner’s arguments persuasive, and we disagree with Patent Owner that claim 1 restricts the timing of user authentication. As Petitioner notes, user authentication occurs in the ’427 patent before the process of establishing a connection as depicted in Figure 5. See Ex. 1001, 12:36–55, Fig. 4 (user authentication occurs when user equipment 2 is powered-up); id. at 13:50–58 (SIP message A501, at the beginning of Figure 5, includes “user authentication success information”). But we find nothing in the claim language, itself, that requires any particular timing for authentication. Nor do we understand Petitioner’s motivation-to-combine argument to hinge on the timing of authentication. Thus, Ueda does not “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 58

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

    “We find Petitioner’s arguments persuasive. Petitioner does not rely solely on the SDP Standard for teaching the sending of play-list information, but also relies on Ueda, which discloses sending a playlist including an identification of main content, commercial content, and an output sequence, as we discuss in more detail below in the context of limitation 1h. See infra Section III.D.3(g). Petitioner relies on the SIP and SDP Standards for teaching that Ueda’s playlist, as with other data describing a session, may be formatted and transmitted as payload within a standard SIP message, for example using SDP fields. Based on the evidence of record, we find it persuasive that a person of ordinary skill in the art would have recognized SDP as a known way to format play-list information, since SDP has specific fields to convey the features of a playlist such as metadata and links to the content. See Pet. 50–52. Petitioner’s arguments are not based on improper hindsight bias. Although Petitioner argues that the SDP Standard “can” or “could” be used to format Ueda’s playlist, the evidence suggests that doing so would merely be “[t]he combination of familiar elements according to known methods,” and that kind of combination “is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. The evidence shows that is the case here. As such, the Petition relies on the predictable combination of the prior art according to known methods and on various motivations to combine the references (see Supra Sections III.D.1–2), not on the ’427 patent itself, for teaching the combination.” slip op. at 57

  Patent outcomesUS 9,769,427 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,769,427
• Microsoft Corporation v. Reald Spark, LLCAll claims unpatentable
  PTAB · Nov 19, 2024 · IPR2023-01046 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–14 and 16–19 are unpatentable: claims 1–3, 5, 10, 12–14, and 18 as anticipated by Ganin; the remaining claims as obvious over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art, but offers a definition of its own. PO Resp. 8. Patent Owner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s or master’s degree in electrical engineering, computer engineering, electrical and computer engineering, computer science, or similar educational background; or equivalent on-the-job training, including approximately two to three years of experience in machine learning and/or pattern recognition.” Id. (citing Ex. 2008 ¶ 22). Patent Owner asserts that the “level of skill is approximate and more experience would compensate for less formal education and vice versa.” Id. We note that the differences between the parties’ descriptions are immaterial and find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’985 patent and prior art of record, and adopt it as our own for purposes of this Decision, albeit without the two instances of “at least,” which introduce ambiguity. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15

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

    “Petitioner contends that it “applied plain and ordinary meanings of all terms and no express constructions are required here.” Pet. 5. Patent Owner agrees with Petitioner that there are no claim terms that require construction for purposes of the Board’s final decision. PO. Resp. 8–9. We therefore determine that we do not need to expressly construe any term for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 17

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient motivation to replace Chalom’s RFC with Aslan’s teacher-student models to enhance the efficiency of the MLA pair in a mobile computing environment. On this record, we agree with Petitioner that the proposed combination of Chalom and Aslan would predictably result in the teacher MLA generating motion vector fields for user gaze correction (i.e., first reference or editing instructions) that are passed to the student MLA, which subsequently generates motion vector fields (i.e., second reference or editing instructions) for further refining the received first reference data. Id. at 58. Consequently, we reiterate that because the proposed combination involves known elements performing their ordinary functions to produce a predictable result, a POSITA would have appreciated that the proposed combination is proper.4 After considering Patent Owner’s arguments, we find Petitioner has shown by a preponderance of the evidence that the proposed combination of Chalom and Aslan is sufficiently supported by the requisite motivation to teach limitations 1[D] and 1[E].” slip op. at 40

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

    “Because Chalom explicitly indicates that its RFC can be trained using any suitable techniques(s) including compressing the classifier, we agree with Petitioner that a POSITA would have looked to Aslan’s teacher-student architecture that proposes compressing large models such as Chalom’s RFC into smaller models so they can be more readily deployed on computing devices with limited resources. Pet. Reply 11–12. As correctly noted by Petitioner, the experts of the parties agree that both Aslan and Chalom involve classifiers. More particularly, as acknowledged by Patent Owner’s representative during the hearing, compression is desirable for Chalom’s RFC. See Tr. 56:21–57:4. Accordingly, we agree with Petitioner that a POSITA would have looked to a similar compression operation of classifiers in Aslan for training a more compact MLA at runtime or offline. Pet. Reply 11–12. For these same reasons, we find unavailing Patent Owner’s argument that Chalom and Aslan are directed to different objectives or techniques. Further, we do not agree with Patent Owner’s argument that replacing Chalom’s large RFC with Aslan’s teacher-student MLA pair would have rendered the ensuing system more complex, and thereby inefficient. As correctly noted by Petitioner, Chalom indicates that the RFC can be embodied in a mobile computing device. Id. at 15 (citing Ex. 1005, 22:33– 37, 19:65–20:6). And Dr. Karam persuasively explains that using the teacher model to train the student model is more efficient because the teacher’s knowledge allows the student model to converge faster. Id. at 17 (citing Ex. 2009, 178:14–24). Accordingly, we find that a POSITA would have found sufficient” slip op. at 39

  Patent outcomesUS 10,740,985 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,740,985
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00382 · APJ Karl D Easthom · IPR · Final written decision

  Claims 19–29 are unpatentable as obvious: claims 19–21 and 25–27 over Knappe, Elliott, VPN Textbook, and Hendricks; claims 22–24, 28, and 29 with Drell added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “believes a POSITA would have a bachelor’s degree in electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8

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

    “In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 9

  • BurdenUnpatentable

    “reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32

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

    “reasons supported by the record as summarized above. See Pet. 35–37; Reply 10–13. For example, summarizing the Petition’s showing, Petitioner contends that “[i]t would have been obvious to a POSITA, in view of Elliott’s teachings, to implement Knappe’s transmission of various types of data as collaboration data, because this type of collaboration data would allow a greater variety of information among the participants, improving the experience and enhancing the effectiveness of collaboration in a variety of contexts.” Reply 13 (citing Ex. 1003 ¶ 348); see also Pet. 35–36 (similar showing (citing Ex. 1006, 3:26–29; 5:31–33; Ex. 1003 ¶¶ 342–361, 409)). Therefore, Petitioner also provides articulated rationale with factual underpinnings to show persuasively that it would have been obvious to employ distinct collaboration data (distinct from audio and video data) in Knappe’s system based on the combined teachings of Knappe and Elliott to supplement the audio and video data during a conference. Based on the summary outlined above, Petitioner also shows persuasively that this collaboration data would have improved Knappe’s similar conferencing system, summarizing as follows: [T]he combination of Knappe and Elliott is merely the ordinary use of common techniques (transmitting collaboration web browsing data, application sharing data, and collaboration data per the T.120 standard as Elliott teaches) to improve the similar conferencing system of Knappe in the same way by allowing for enhanced collaboration among participants. Reply 14 (citing Ex. 1003 ¶ 352). Based on the record and foregoing discussion, we find that Petitioner articulates persuasive rationale supported by the record to show that the combined teachings of Knappe and Elliott satisfy steps 19.1.1 and 19.2.1.” slip op. at 32

  Patent outcomesUS 9,843,612 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,843,612
• Zoho Corporation / Zoho Corporation. PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00380 · APJ Karl D Easthom · IPR · Final written decision

  Claims 10–18 are unpatentable as obvious under § 103(a) over Drell, Knappe, Elliott, Hendricks, and Doganata.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8

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

    “In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. Because any explicit construction would not alter the outcome, an explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. (Fed. Cir. 1999))).” slip op. at 9

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

    “been obvious to implement a VPN tunnel with Drell’s system. Patent Owner does not dispute that Elliott specifically discloses a VPN tunnel that is consistent with the district court construction. Petitioner establishes persuasive motivation for employing Elliott’s well-known VPN tunnel in Drell’s conferencing system with a reasonable expectation of success. See Pet. 24–25, 32–33. For example, as noted above, Petitioner contends that Drell teaches that its “network 106 may comprise a packet switched network, such as the Internet” (Pet. 42 (quoting Ex. 1008, 3:33–38)), and Elliott “teaches communicating conferencing ‘media stream (e.g. voice, fax, data, video, etc.)’ over ‘the public Internet’ using ‘virtual private network (VPN) . . . IP-tunneling.’” (id. (quoting Ex. 1007, 2:66–3:1, 4:6–34, 6:43– 54)). Based on these teachings, Petitioner contends that it would have been obvious to employ a VPN tunnel in Drell’s network as Elliott teaches, in order to “provide Drell with secure communications as the communications traverse Internet network 106” between conference endpoints (rendering the endpoints/appliances secure). See id. at 42–43 (citing Ex. 1003 ¶ 236, “network 18 can be either a public or a carrier supported virtual private network (VPN) or local area network (LAN) which uses IP or IP-tunneling.” Reply 12 (citing Ex.1007, 4:28–32). Therefore, as Petitioner also argues “[t]his network allows for secure transmission of audio data via a VPN tunnel.” Id. (citing Ex. 1003 ¶¶ 234–236). Petitioner also persuasively explains that a POSITA would have understood that VPNs are beneficial because they reduce the need to lease private data lines, which reduces or avoids the costs for implementing a private network by communicating securely over the Internet. [Ex. 1003 ¶ 168] Indeed, the combination of Drell and Elliott is merely the ordinary use of a common technique (using VPN tunneling for conferencing data) in the similar conferencing system of Drell to yield predictable results of (1) securing the transmitted data, and (2) reducing or avoiding costs associated with leasing private data lines. Id. ¶169.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “because Elliot “teaches two independent calls with two independent remote parties connected to the call-center.” PO Resp. 27.10 Patent Owner also argues that Elliott “teach[es] away [from] sharing audio data between remote parties” so that “it would not be combined with Knappe or Drell which involve sharing audio and video between remote parties.” Sur-reply 7. Patent Owner points to teachings about Elliott’s agents to support its arguments. See id. at 4–8. 10 Again, Patent Owner presents this specific argument to unchallenged claim 19. See id. at 26–27. is not, teaching a different way to communicate audio (e.g., via “independent calls” between a call-center agent according to Patent Owner does not teach away from using audio or mixed audio. See PO Resp. 27. As noted above, Patent Owner admits that Elliott discloses “secure audio data . . .between the end user and call center,” therefore Elliott also does not teach away from transmitting and receiving “secure audio data” between remote parties. See PO Resp. 24. Moreover, Patent Owner’s arguments attack the references individually without addressing Petitioner’s specific reliance on different teachings in the references, where the Petition relies on Drell as teaching transmitting audio between remote parties and supplements that with the audio mixing teachings of Knappe, as summarized above. See Pet. 44–48. In addition, contrary to Patent Owner’s arguments, as Petitioner notes and as discussed above, Elliott generally discloses audio and also securing the transmission of audio data with VPN tunnels. See Reply 11 (stating that “Elliott teaches ‘collaborative Web browsing, audio conferencing, video conferencing, and application sharing” (citing Ex. 1007, 1:40–44; Ex. 1003 ¶ 133)). This parenthetical quotation by Petitioner is in a section titled “BACKGROUND OF THE INVENTION.” Ex. 1007, 1:32–45. Petitioner also shows that Elliott teaches the use of ‘“a virtual private network (VPN) . . . which uses IP or IP-tunneling’ for the transmission of ‘voice, fax, data, video’ and ‘[o]ther types of collaboration . . . data’ during the conference.” Reply 11 (emphasis added) (quoting Ex. 1007, 2:66–3:1, 4:30–32, 6:53–54; citing Ex. 1003 ¶ 133); accord Pet. 42 (materially similar showing (citing Ex. 1007, 2:66–1, 4:6–34, 6:43–54).” slip op. at 41

  Patent outcomesUS 9,843,612 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,843,612
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–8 are unpatentable under § 103(a): claims 1–4 over Drell, Knappe, and Voois, and claims 5–8 over Drell, Knappe, Voois, Elliott, and VPN Textbook.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 8. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 7 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.8 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))). Moreover, Petitioner’s proposed construction of “mixed data stream” is not inconsistent with the district court’s construction of “first mixed data stream” and “second mixed data stream,” in that both constructions include at least audio data and video data, and Patent Owner does not argue otherwise.” slip op. at 10

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [1.1]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [1.1], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.10 See PO Resp. 16–18. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. Patent Owner also fails to explain how the alleged “fundamental” differences in Knappe and Drell have any bearing on how they are used in the proposed combination. See PO Resp. 16–18; Sur-reply 3–4. Rather, Patent Owner’s argument merely points out alleged differences between the references, while essentially ignoring their commonalities. To the extent Patent Owner is arguing that it would not have been obvious to physically combine Drell and Knappe or bodily incorporate them into each other,11 Petitioner states, with supporting testimony from Dr. Houh, that the 10 Although Patent Owner cites to paragraphs 21 and 22 of Mr. Dye’s Declaration (PO Resp. 17), this testimony does not support the arguments for which it is cited. In the Sur-reply, Patent Owner clarifies that the citation should have been to paragraph 20 of Mr. Dye’s Declaration (Sur-reply n. 1), but, as discussed below, this testimony merely repeats arguments made in the Sur-reply. See Sur-reply 4–5. 11 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). proposed combination “permits, but does not require, physical incorporation of elements from Drell and Knappe.” Pet. 22 (citing Ex. 1003 ¶ 168) (emphasis added). In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “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.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 12 This is a new argument raised in the Sur-reply. However, even if we consider this argument, we do not find it persuasive for the reasons stated. (PTAB August 24, 2022) (precedential); see also 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.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 23

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

    “In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “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.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15” slip op. at 25

  Patent outcomesUS 9,094,525 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–12 are unpatentable under §103: claims 1, 2, 4, 5, and 7 over Knappe, Elliott, and VPN Textbook; claims 3, 6, and 8–11 with Drell; and claim 12 with Drell and Hoke.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Dec. 10–11. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the evidence of record, including the asserted prior art and the ’332 patent’s specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. Patent Owner does not argue, and we do not discern, that any claim terms are in controversy on the current record.8 See 8 Although Patent Owner mentions the district court’s claim construction for “Virtual Private Network (VPN)” and “VPN tunnel” in connection with its arguments for claims 1 and 8 (PO Resp. 21, 28), Petitioner argues, and we agree, that Patent Owner’s arguments do not suggest that Petitioner’s arguments are inconsistent with any of these constructions. Reply 2; see Tr. 8:1–9:1 (Petitioner’s counsel stating that “We don’t actually have a problem with [the district court’s] construction [of VPN]. I think it may be overly broad, but it doesn’t impact our analysis in either way.”); Tr. 9:2–14 (Petitioner’s counsel stating that “[T]here’s no difference between how Dr. Houh applied tunneling and how the [district court] construed it, so we’re fine with either construction . . . In fact, I see them as the same construction.”); Tr. 47:11–13 (Patent Owner’s counsel stating “I agree with [Petitioner’s counsel] that it may not matter whether his construction, his 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))).” slip op. at 15

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

    “Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41

  Patent outcomesUS 9,253,332 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,253,332
• Uber Technologies, Inc. v. LBT IP II LLCAll claims unpatentable
  PTAB · Dec 6, 2023 · IPR2022-00880 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 11–16 are unpatentable: claim 11 as obvious over Hashimoto and Hockley; claims 12–14 with Luccketti; and claims 15–16 with Mohi.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “applicable evidentiary standard, Petitioner has the burden to prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2022). “Preponderance of the evidence means the greater weight of evidence, evidence which is more convincing than the evidence which is offered in opposition to it.” United States v. C.H. Robinson Co., 760 F.3d 1376, 1383 (Fed. Cir. 2014) (internal quotations omitted). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’855 patent, the background technical field, the prior art, and Petitioner’s generally unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Mr. Andrews (Ex. 1002 ¶¶ 27, 32–71). Regardless, neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art.” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))). “Petitioner does not believe that any term requires explicit construction to resolve the grounds presented.” Pet. 8. “Patent Owner agrees that none of the terms in the patent require an explicit construction to resolve the dispute between the parties,” and submits that “all of the terms should be given their plain and ordinary meaning in light of the surrounding claim language.” PO Resp. 5. Based upon the parties’ positions here and our consideration of the complete record before us, we conclude that it is unnecessary to interpret expressly any limitations for purposes of rendering our final decision in this case. See Nidec, 868 F.3d at 1017. That said, we note that the parties present various patentability arguments in this case that depend at least in part on attributing a particular interpretation to certain claim limitations. We discuss these interpretations in the context of the relevant limitations in our patentability analysis below in Section III.D.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Neither Petitioner nor Patent Owner takes a position as to whether the preamble is limiting, nor does Patent Owner dispute that Hashimoto discloses such a “method,” generally. See Pet. 18–19; see generally PO Resp.; PO Sur-reply. Because we find that Petitioner’s cited disclosure from Hashimoto discloses a “method of determining location via a tracking device associated with an individual or an object to be located,” we need not determine whether the preamble is limiting. See Nidec, 868 F.3d at 1017.” slip op. at 19

  Patent outcomesUS 7,598,855 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,598,855

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.