• Røde Microphones, LLC / Freedman Electronics Pty Ltd. v. Zaxcom, Inc.Institution denied
  PTAB · Sep 30, 2025 · IPR2025-00557 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the challenged claims were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26

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

    “We agree with Patent Owner that the “master timecode generator” produces a signal that “controls” another timecode generator. See Prelim. Resp. 19 (citing a dictionary definition of “master” as “[one] that has control over another or others,” Ex. 2019, 3). We see no basis, however, to limit the claim term to a particular type of control. Patent Owner points to Figure 6 of the ’444 patent where “the master timecode generator creates master timecodes that are used to control the speed of the local timecode generator to ensure the two timecode generators are synchronized.” See Prelim. Resp. 19‒20 (citing Ex. 1001, col. 17, ll. 9‒16, Fig. 6). But Figure 6 merely depicts an exemplary “process for recording audio and for replaying and re-recording segments of missed audio in accordance with one embodiment of the present invention.” See Ex. 1001, col. 3, ll. 15‒17. Further, the Specification describes the exemplary embodiment of Figure 6 as a master unit providing master timecodes to a local audio device, which “synchronizes (e.g., jam syncs) its respective on board local timecode generator with the master timecodes,” but does not specify exactly how the master unit exercises control. Id. at col. 17, ll. 9‒17. Thus, we do not include any particular control mechanism (e.g., changing the speed of the local timecode generator) in our interpretation at this time. Based on the record presented, we interpret “master timecode generator” as “a producer of a master time reference signal that controls at least one other timecode generator” and “master timecode” as “a time reference signal used to synchronize at least one device.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not sufficiently shown that Strub teaches or suggests limitation 1[A]. Petitioner relies on Strub’s disclosure of a “master” recording unit as the claimed “remote receiver.” Pet. 34 (citing Ex. 1003, col. 38, ll. 29‒39). The cited portion of Strub is reproduced below: Data other than recording data can also be exchanged between recording units. For example, it may be desirable to coordinate the recordings obtained by recording units so that frames of visual recording data obtained by different recording units are temporally synchronized (e.g., so that a frame begins at the same time for each recording unit). This can be done by transmitting a synchronization pulse from a “master” recording unit to each of the other recording units (“slave” recording units). (Synchronizing analog visual data acquisition devices in this way is referred to as “genlocking.”) Ex. 1003, col. 38, ll. 29‒39. As argued by Patent Owner (see Prelim. Resp. 36), the cited procedure involves synchronizing frames of visual recording data, not audio recording data. Petitioner has not disputed Patent Owner’s assertions that the described “genlocking” technique is a video synchronization technique that does not apply to or affect the synchronization of system clocks or audio timestamps and has no bearing on audio synchronization. Nor does Petitioner explain in the Petition or the Preliminary Reply how or why an ordinarily skilled artisan would have applied this teaching to audio data recorded by an audio device. Petitioner cites this visual recording data synchronization passage as a solution to a problem that Strub identifies in clocks not being adequately synchronized to enable use of time-stamps associated with recordings to be used to synchronize the recordings. See Prelim. Reply 1‒2 (citing Ex. 1003, col. 38, ll. 29‒37, col. 79, l. 63‒col. 80, l. 2). However, immediately following the cited portion that identifies this problem, Strub further explains that “[i]f recording units according to the invention each include a GPS receiver, such mis-synchronization will only exist to an appreciable degree if one or more recording units are shielded from a GPS transmitter system for an extended period of time, e.g., several hours.” Ex. 1003, col. 80, ll. 2–27. Thus, Strub suggests that the solution to this problem is for the recording units to receive their timecodes not from a master recording unit, as argued by Petitioner, but from a GPS satellite.4 Petitioner does not address this teaching.” slip op. at 22

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that the Petition does not rely on Woo as teaching or suggesting limitation 1[A]; Petitioner relies solely on the teachings of Strub. See Pet. 33–35 (arguing that “Strub teaches this element”). Petitioner references Strub’s teachings as being “consistent with and reinforced by the Woo reference” in the Preliminary Reply (Prelim. Reply 2), but this is not sufficient to rely on Woo, alone or in combination with Strub, as teaching this limitation. We also agree that the Lectrosonics IPRs’ findings regarding Woo teaching the “master timecode generator” limitation recited in those challenged claims are inapplicable here, where claim 1 recites additional limitations not present in those challenged claims. Compare Ex. 1001, col. 43, ll. 26‒27 (claim 1 of the ’444 patent: “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data”) with Ex. 1028, col. 23, ll. 20‒21 (claim 1 of the ’814 patent: “at least one master timecode generator for generating a plurality of master timecodes”) and Ex. 1030, col. 23, ll. 38‒39 (claim 1 of the ’902 patent: “at least one master timecode generator for generating a plurality of master timecodes”). Based on the record before us, Petitioner has not shown sufficiently that Strub teaches or suggests “a remote receiver, the remote receiver configured to create at least one master timecode and to receive audio data,” as recited in claim 1. Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Strub and Woo.” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 12,051,444
• SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution denied
  PTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18

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

    “IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,798,967
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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.’” (citation omitted) (emphasis added)).” slip op. at 9

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

    “Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,123,463
• Forcepoint LLC v. Open Text Inc.Institution denied
  PTAB · Nov 13, 2023 · IPR2023-00784 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–13, 15, 16, and 18 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6–7 (citing Ex. 1002 ¶¶ 22–25). Patent Owner argues that a person of ordinary skill in the art instead would have had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶ 50. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 8

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

    “(emphasis added)). We recognize that “[d]ifferent claim terms are presumed to have different meanings.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns, 820 F.3d 419, 431 (Fed. Cir. 2016); Phillips, 415 F.3d at 1314. The challenged claims recite “a plurality of factors” that includes “security history” in a list with the “legitimacy” and “behavior” factors. Each of “security history,” “legitimacy,” and “behavior” are different words. We discern nothing in the claim language suggesting that the presumption that these different words carry different meanings is overcome.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “495’s list of criteria relied on by Petitioner includes “historical data associated with the IP address of the URL host” in a list of “information” that Hubbard-495’s reputation scoring module uses to generate scores. Ex. 1004, 18:58–19:22. We find that Petitioner’s argument that “Hubbard- 495 explains that this ‘historical data’ could include historical security data,” such as HTTPS certificate details, active content, and a fingerprint (Pet. 25) is not consistent with the description in Hubbard-495. Hubbard-495 merely describes “historical data associated with the IP address of the URL host” in a list of information, without indicating that any other information in that list comprises “historical data.” Ex. 1004, 18:58–19:22. We also agree with Patent Owner (Prelim. Resp. 38) that the phrase “historical data associated with the IP address of the URL host” (Ex. 1004, 19:3–4) does not indicate that the data relates to security events and Petitioner does not identify disclosure in Hubbard-495 that remedies the deficiency.” slip op. at 17

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,438,386
• Forcepoint LLC v. Open Text Inc.Institution denied
  PTAB · Nov 9, 2023 · IPR2023-00786 · APJ Justin T Arbes · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted §103 grounds.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’928 patent (October 2011), a person of ordinary skill in the art would have had “at least a four-year undergraduate degree in computer science or a closely related field and at least two years of experience in the field of computer and network security,” where “[a]dditional education could substitute for professional experience and vice versa.” Pet. 8 (citing Ex. 1002 ¶¶ 26–29). Patent had “a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have [had] 2–3 years of practical work experience in the general fields of electrical engineering, computer science, networking, communications, and/or device and network security,” where “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Prelim. Resp. 28; see Ex. 2001 ¶¶ 49–51. The parties’ proposed definitions have only minor differences (e.g., at least two years of work experience versus 2–3 years). For purposes of this Decision, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of education and practical experience. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “potentially malicious “content” that is requested. Limitations [1A]–[1C], for example, recite intercepting a “request” from a web browser, determining whether the “request” is associated with known malicious “content,” and blocking the “request” when it is so associated. Limitations [1D]–[1I] then similarly recite, when the “request” is not so associated, sending the “request” to one or more web servers, receiving web “content” “in response to [that] request,” processing the received web “content” to create a modified version of a web page, and providing that modified version of the web page to the web browser application for rendering and display. Thus, the “request” in claim 1 is a request for “content,” which is what the one or more web servers return. Dependent claims 4 and 12 likewise recite determining “whether a request for the web content from the web browser application is a first request.” Patent Owner argues, and we agree, that Petitioner’s reading of the claim language “obfuscates the difference between (i) determining whether a request from a web browser is server-directed malware (as disclosed in Step 400 of Devarajan) and” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “for limitation [1B]. As explained above, we interpret the limitation to not encompass determining whether the request itself is malicious. See supra Section II.C. Devarajan discloses two sets of actions: a first set, prior to receiving content from the hosting server, designed to protect the hosting server from server-directed malware transmitted by the client (Steps 400 and 1000–1050 in Figure 10), and a second set, after content has been received, designed to protect the client from client-directed malware transmitted by 88–118 (describing the “bi-directional” detection and removal of malware), Figs. 9–10; see Ex. 2001 ¶¶ 58–60, 71–72. Step 400 is part of the first set. At Step 400, before transmitting the client’s request for content from the website, server 108 “determin[es] whether an event associated with the client 900 or its first network resource address 901 matches one or more of a plurality of event signatures 102 in one or more network security device 100 communicatively coupled to the network 101.” Ex. 1004 ¶¶ 96, 111. Specifically, server 108 examines the request to identify characters (i.e., signatures) that match strings indicative of malicious activity (e.g., a DDoS attack signature or an SQL injection attack signature). Id. ¶¶ 41, 45–48. If a match is found, the request is blocked from reaching hosting server 903 (Step 1010); otherwise, the request is transmitted (Step 1050). Id. ¶¶ 98, 111–112. As Patent Owner correctly points out, Devarajan is entirely silent as to what content client 900 is requesting from website 902 at this stage. See Prelim. Resp. 39; Ex. 2001 ¶ 72. Again, Step 400 looks only at the request from the client (i.e., “an event associated with the client 900 or its first network resource address 901” in Petitioner’s view) to determine whether the request itself is malicious as to the hosting server. See Ex. 1004 ¶¶ 96, 111. Step 400 does not determine whether content associated with the request might be malicious. See id. Accordingly, Petitioner has not shown sufficiently that Step 400 discloses limitation [1B].” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,025,928
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Nov 2, 2023 · IPR2023-00731 · APJ Scott Raevsky · IPR · Institution

  The Board denied institution because Petitioner did not show Li was prior art, defeating the reasonable-likelihood showing for all challenged claims and grounds.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’243 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • BurdenDecided for patent owner

    “therefore, “the Board [will] not consider[] these hyperlinked webpages as evidence in [this] proceeding[].” Ex. 3001. As a result, Dr. Hall-Ellis’s declaration does not cite any supporting evidence of record in this proceeding (other than Li itself, Ex. 1005). Ex. 1009 ¶¶ 40–43. The declaration thus “does not disclose the underlying facts or data on which the opinion is based” and is therefore “entitled to little or no weight.” See 37 C.F.R. § 42.65(a). For this reason alone, we find that Petitioner has failed to establish the public accessibility of Li.” slip op. at 15

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Our rules require that “[a]ll evidence must be filed in the form of an exhibit,” and that “[e]ach exhibit must be filed with the first document in which it is cited except as the Board may otherwise order.” Id. §§ 42.63(a), 42.6(c). Despite Petitioner not filing the webpage links as exhibits with Exhibit 1009, we gave Petitioner the opportunity to correct this error and ordered Petitioner to file late copies of these webpage links as exhibits by September 22, 2023. See Ex. 3001 (email order); 37 C.F.R. § 42.6(c) (“except as the Board may otherwise order”). Petitioner declined to do so, instead choosing to request authorization to file a Motion to Dismiss, which we authorized in an order mailed October 2, 2023 (Paper 17).7 In our email order, we informed Petitioner that failure to file the webpage links as exhibits would result in the Board not considering the webpage links as evidence in these proceedings. Ex. 3001. Our order authorizing filing of the Motion to Dismiss did not obviate Petitioner’s responsibility to file copies of the webpage links as exhibits. See id.; Paper 17.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 22–23 (citing Ex. 2001 ¶¶ 41–43). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’243 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision. Our decision would not have changed had we adopted Patent Owner’s definition.” slip op. at 6

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 8,201,243
• Apple Inc. v. Taction Technology, Inc.Institution denied
  PTAB · Apr 18, 2022 · IPR2022-00058 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We are not particularly persuaded by either party’s evidence. The parties’ declarants offer conclusory opinions as to the level of ordinary skill relied upon in forming their opinion or showing their analysis of the facts. See Ex. 1003 ¶¶ 70–73; Ex. 2001 ¶¶ 66–69. Such testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a). That said, based on the record presented, we are persuaded by Patent Owner’s argument that Petitioner’s formulation is not commensurate with the technology of the ’117 patent. Specifically, the claims of the ’117 patent recite an “apparatus,” “apparatus for imparting vibrations,” or “apparatus for generating damped electromagnetically actuated planar motion.” We see nothing in the claims that would require “a working knowledge of computing devices and their associated hardware (including input/output devices) and software.” See Pet. 3–4. Instead, all that is required is a working knowledge of tactile transducers. See Ex. 1001, col. 1, ll. 20–21 (“The present invention relates to tactile transducers that produce bass frequency vibrations for perception by touch.”), col. 3, ll. 46–47 (“Therefore, there exists a need for novel audio-frequency tactile transducers and devices.”). This is also consistent with the prior art cited by Petitioner and its arguments. Accordingly, we adopt Patent Owner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert discountedOther

    “parties’ declarants offer conclusory opinions as to the level of ordinary skill relied upon in forming their opinion or showing their analysis of the facts. See Ex. 1003 ¶¶ 70–73; Ex. 2001 ¶¶ 66–69. Such testimony is entitled to little or no weight. 37 C.F.R. § 42.65(a). That said, based on the record presented, we are persuaded by Patent Owner’s argument that Petitioner’s formulation is not commensurate with the technology of the ’117 patent. Specifically, the claims of the ’117 patent recite an “apparatus,” “apparatus for imparting vibrations,” or “apparatus for generating damped electromagnetically actuated planar motion.” We see nothing in the claims that would require “a working knowledge of computing devices and their associated hardware (including input/output devices) and software.” See Pet. 3–4. Instead, all that is required is a working knowledge of tactile transducers. See Ex. 1001, col. 1, ll. 20–21 (“The present invention relates to tactile transducers that produce bass frequency vibrations for perception by touch.”), col. 3, ll. 46–47 (“Therefore, there exists a need for novel audio-frequency tactile transducers and devices.”). This is also consistent with the prior art cited by Petitioner and its arguments. Accordingly, we adopt Patent Owner’s proposed definition of the level of ordinary skill in the art, except that we eliminate the term “at least” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art. We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.” slip op. at 9

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

    “We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose interpretations of any claim terms, but states that it “may assert” in the district court case that certain limitations in claims 1 and 9 are indefinite. Pet. 5–6. Patent Owner also does not propose interpretations of any claim terms. Prelim. Resp. 21–22. We conclude that no claim terms require interpretation to determine whether to institute an inter partes review in this proceeding. 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.’” (citation omitted)).” slip op. at 11

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,820,117
• Samsung Electronics America, Inc. v. Proxense, LLCInstitution denied
  PTAB · Feb 28, 2022 · IPR2021-01447 · APJ Kevin F Turner · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

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

    “We agree with Patent Owner. The plain meaning of “third-party trusted authority” suggests an entity or party separate from the principal parties to a transaction. See, e.g., THE AMERICAN HERITAGE COLLEGE DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the principals involved in a transaction.”) (Ex. 3002). This is consistent with the description in the Specification. For example, Figure 3, reproduced above, depicts trusted key authority 320 as an entity separate from biometric key 100, authentication module 310, and application 330. As the Specification states, “[t]rusted key authority 320 is a third-party authority that is present in some embodiments in order to provide enhanced security.” Ex. 1001, 6:37–39. Examples of trusted key authorities include “a government official, a notary, and/or an employee of a third party which operates the trusted key authority, or another form of witness.” Id. at 7:33–36. Petitioner’s citations to the applicant’s statement during prosecution of the related patent also are consistent with a third-party trusted authority being an entity separate from the principal parties to a transaction, as is the declaration of Dr. Nielson. See Ex. 2001, 6–8; Ex. 2003 ¶¶ 70–74. Thus, we interpret “third-party trusted authority” to mean a trusted authority that is an entity separate from the parties to a transaction.” slip op. at 13

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

    “Claim 1 also recites “responsive to receiving an access message from the third-party trusted authority-indicating that the third-party trusted authority successfully authenticated the ID code,” with claim 9 providing a similar recitation. Patent Owner argues that “[a]n ‘access message’ must be sent by the ‘third party trusted authority’” and the parties “agree that the ‘access message’ originates from the ‘third-party trusted authority’ and communicates information regarding authentication.” Prelim. Resp. 3–4 (citing Ex. 2001, 9). Given the express requirement in claims 1 and 9 that the access message be received “from” the third-party trusted authority, we conclude that no further interpretation of the “access message” limitations is necessary.9” slip op. at 14

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

    “We agree with Patent Owner. Petitioner has not explained sufficiently why Lapsley’s DPC is a third-party trusted authority, what entities the DPC is a third-party relative to, or what application the user is being permitted to access in the asserted combination. As Patent Owner points out, the DPC appears to be what is being accessed, as the payee and payor, with the PIA, access a list of financial accounts from the DPC. See id. at 8–9; Ex. 1007 ¶¶ 167–170. Here, the DPC is the resource to be accessed, but it is a party to the transaction, rather than a third party. This is similar to the situation Petitioner argues that the applicant distinguished during prosecution: “[d]uring prosecution, the applicant explained a ‘user []prov[ing] to the same institution that authenticates the fingerprint information that the user is who he purports to be’ does not satisfy the ‘third party’ limitation.” See Ex. 2001, 7 (quoting remarks made by the applicant during prosecution of the related patent (alterations by Petitioner)). Petitioner’s reasons to combine also are conclusory and unsupported by persuasive evidence. In particular, Dr. Wolfe merely repeats Petitioner’s arguments in his testimony, without further explaining them or identifying the basis for his opinions.10 See Ex. 1003 ¶ 48. We agree with Patent Owner that Petitioner has not shown that Lapsley teaches a “third-party trusted authority” or that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Scott and Lapsley.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,298,905
• Samsung Electronics America, Inc. v. Proxense, LLCInstitution denied
  PTAB · Feb 28, 2022 · IPR2021-01444 · APJ Justin T Arbes · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an [inter partes review (IPR)] proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” (emphasis added)). In the Preliminary Response, 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’730 patent have an effective filing date before the effective date of the applicable AIA amendment, we refer to the pre-AIA version of 35 U.S.C. § 103. See Ex. 1001, codes (22), (60). Petition in view of the district court case. Prelim. Resp. 4–6 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). We need not decide this issue, however, as we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 8

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

    “We agree with Patent Owner. The plain meaning of “third-party trusted authority” suggests an entity or party separate from the principal parties to a transaction. See, e.g., THE AMERICAN HERITAGE COLLEGE DICTIONARY 1433 (4th ed. 2004) (“third party n. . . . 2. One other than the principals involved in a transaction.”) (Ex. 3002). This is consistent with the description in the Specification. For example, Figure 3, reproduced above, depicts trusted key authority 320 as an entity separate from biometric key 100, authentication module 310, and application 330. As the Specification states, “[t]rusted key authority 320 is a third-party authority that is present in some embodiments in order to provide enhanced security.” Ex. 1001, col. 5, ll. 40–42. Examples of trusted key authorities include “a government official, a notary, and/or an employee of a third party which operates the trusted key authority, or another form of statement during prosecution of the ’730 patent also are consistent with a third-party trusted authority being an entity separate from the principal parties to a transaction, as is the declaration of Dr. Nielson. See Ex. 2001, 6–8; Ex. 2003 ¶¶ 70–74. Thus, we interpret “third-party trusted authority” to mean a trusted authority that is an entity separate from the parties to a transaction.” slip op. at 14

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

    “We agree with Patent Owner. Petitioner has not explained sufficiently why Lapsley’s DPC is a third-party trusted authority, what entities the DPC is a third-party relative to, or what application the user is being permitted to access in the asserted combination. As Patent Owner points out, the DPC appears to be what is being accessed, as the payee and payor, with the PIA, access a list of financial accounts from the DPC. See id. at 8–9; Ex. 1007 ¶¶ 167–170. Here, the DPC is the resource to be accessed, but it is a party to the transaction, rather than a third party. This is similar to the situation Petitioner argues that the applicant distinguished during prosecution: institution that authenticates the fingerprint information that the user is who he purports to be’ does not satisfy the ‘third party’ limitation.” See Ex. 2001, 7 (alterations by Petitioner). Petitioner’s reasons to combine also are conclusory and unsupported by persuasive evidence. In particular, Dr. Wolfe merely repeats Petitioner’s arguments in his testimony, without further explaining them or identifying the basis for his opinions.5 See Ex. 1003 ¶ 59. We agree with Patent Owner that Petitioner has not shown that Lapsley teaches a “third-party trusted authority” or that an ordinarily skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Scott and Lapsley. Because Petitioner does not show persuasively that either Scott or Lapsley teaches a “third-party trusted authority,” as recited in claim 1, or that an ordinarily skilled artisan would have combined the teachings of those references, Petitioner has not shown sufficiently that Scott and Lapsley teach limitation 1E: responsive to a determination that the scan data matches the biometric data, wirelessly sending one or more codes from the plurality of codes and the other data values for authentication by an agent that is a third-party trusted authority possessing a list of device ID codes uniquely identifying legitimate integrated devices. Petitioner’s ground fails for an additional reason as well. Limitation” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s reasons to combine also are conclusory and unsupported by persuasive evidence. In particular, Dr. Wolfe merely repeats Petitioner’s arguments in his testimony, without further explaining them or identifying the basis for his opinions.5 See Ex. 1003 ¶ 59. We agree with Patent Owner that Petitioner has not shown that Lapsley teaches a “third-party trusted authority” or that an ordinarily skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Scott and Lapsley. Because Petitioner does not show persuasively that either Scott or Lapsley teaches a “third-party trusted authority,” as recited in claim 1, or that an ordinarily skilled artisan would have combined the teachings of those references, Petitioner has not shown sufficiently that Scott and Lapsley teach limitation 1E: responsive to a determination that the scan data matches the biometric data, wirelessly sending one or more codes from the plurality of codes and the other data values for authentication by an agent that is a third-party trusted authority possessing a list of device ID codes uniquely identifying legitimate integrated devices. Petitioner’s ground fails for an additional reason as well. Limitation 1G recites “responsive to authentication of the one or more codes and the other data values by the agent, receiving an access message from the agent allowing the user access to an application.” Thus, the claim plainly requires 5 Moreover, as explained below, the entirety of Dr. Wolfe’s testimony lacks credibility and is entitled to no weight. See infra Section II.G.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,352,730
• Volkswagen Group Of America, Inc. v. Stratosaudio, Inc.Institution denied
  PTAB · Nov 12, 2021 · IPR2021-00717 · APJ Kevin C Trock · IPR · Institution

  The Board denied institution on all challenged claims: Grounds 1–3, 6, and 7 failed the institution threshold, and Grounds 4 and 5 were denied under § 325(d).

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “the list of cited references of the ’203 Patent. Ex. 1001, 2; Ex. 1002, 430. Because the same reference was cited during prosecution, there is no material difference between Christensen and the prior art involved during examination. Given these facts, we need not further evaluate factor (b), whether Christensen is cumulative, nor factor (d), the extent of overlap in arguments regarding Christensen. Thus, we find that the same reference was previously presented to the Office, and we move on to the second part of the Advanced Bionics framework.” slip op. at 11

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

    “unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account Patent Owner’s Preliminary Response, we conclude that the Petition does not establish there is a reasonable likelihood Petitioner would prevail in establishing at least one of Challenged Claims of the ’203 Patent as unpatentable under certain grounds presented in the Petition, and that the remaining asserted grounds should be denied pursuant to our delegated discretion under 35 U.S.C. § 325(d). Accordingly, we do not institute an inter partes review as to any of the challenged claims of the ’203 Patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that “[a] person of ordinary skill in the art (‘POSITA’) would have had at least a B.S. in computer science, electrical engineering, or a related field, and three years of experience working in the communications- or Internet-related industries” and that “[m]ore education or skill might make up for less experience, and vice-versa.” C. Pet. 5 (citing Ex. 1003 ¶ 43). Patent Owner does not dispute this level of skill. See generally Prelim. Resp. Petitioner’s description of the level of ordinary skill appears to be generally consistent with the subject matter of the ’203 Patent. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill.” slip op. at 14

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

    “We are not persuaded by Petitioner that the recited database system should be given no patentable weight. The Federal Circuit explains that [p]roduct-by-process claims are not specifically discussed in the patent statute. The practice and governing law have developed in response to the need to enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made. For this reason, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). With respect to patentability, “[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Id. The Federal Circuit has clearly stated that “[i]n determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Purdue Pharma, 811 F.3d at 1354 (quoting Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012)). “That is because of the . . . longstanding rule that an old product is not patentable even if it is made by a new process.” Id. Generally, therefore, the recited process steps in a product-by-process claim are not accorded patentable weight. See In re Nordt Development Co., LLC, 881 F.3d 1371, 1375 (Fed. Cir. 2018) (“[T]he Board typically will not accord patentable weight to a process limitation in a product-by-process claim.”) (citing Thorpe, 777 F.2d at 697).” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,200,203

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.