- Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing grantedPTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing
Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed
“a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,079,086 - Palo Alto Networks, Inc. v. Finjan, Inc.Rehearing grantedPTAB · May 19, 2017 · IPR2016-00151 · APJ Miriam L Quinn · IPR · Rehearing
The Board clarified the construction of “a call to a first function” but left unchanged its determination that claims 1–8, 10, and 11 were not shown unpatentable over Ross.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“proceeding. Paper 51 (“Final Dec.”). On April 14, 2017, Palo Alto Networks, Inc. (“Petitioner”) filed a Request for Rehearing. Paper 52 (Req. Reh’g.). Petitioner’s Request urges the Board to review the construction of “a call to a first function” for consistency with the construction given to the same term in our Final Written Decision in IPR2015-01979.2 We agree with Petitioner that the construction of “a call to a first function” must be consistent with our determination in IPR2015-01979. Accordingly, we hereby modify our Final Written Decision in this proceeding to reflect that the construction for the term “a call to a first function” means “a statement or instruction in the content, the execution of which causes the function to provide a service.” That construction remains, however, consistent with our analysis and determinations made in our Final Written Decision, and therefore requires no modification of our conclusions. For example, at page 8 of that Decision we stated that “we determine that the ‘call’ is a statement or instruction in the content, the execution of which causes the function to provide a service.” Final Dec. 8. Accordingly, the last sentence of the first paragraph in page 9 of the Final Written Decision is modified to repeat what we stated earlier in page 8 of the Decision: “we determine that a ‘call to a first function’ means a statement or instruction in the content, the execution of which causes the function to provide a service.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Petitioner advocates. The word “call” is recited in claim 1 as a noun, and is the statement or instruction included in the content that causes the first function to provide a service. Final Dec. 7; Ex. 1001, 17:34−36. The word “invoking” appears elsewhere in the claim in connection with the transmission of the call’s input, which occurs “when the first function is invoked.” Ex. 1001, 17:39−40. The claim language is straightforward: the received content includes a call to a first function, and when that same first function is invoked, the function’s input is transmitted to the security computer. In summary, Petitioner’s request urges us to view the claim construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“construction as allowing the call included in the received content to request the services of a function different from the function in the call statement or instruction. To illustrate, if the content states “call function X” but instead, during runtime, function Y is invoked, Petitioner asserts that this scenario would be a “call” to function Y, and therefore meet the claim. As stated above, however, the claim language does not support this reading. The call to the first function must be included in the content, and it is the same first function that is invoked later in the claim. Our claim construction does not change the plain reading of the claim language. Therefore, the execution of the statement or instruction included in the content must cause the function identified in the statement or instruction to provide a service. To illustrate, if the content states “call function X,” during runtime, function X must be invoked. Ross,3 as we discuss in our Final Written Decision, does not do this. See Final Dec. 17−19 (concluding that Ross invokes indirectly the hook function without any need to include a call to that hook function).” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 8,141,154 - Arctic Cat, Inc. v. Polaris Industries, Inc.Rehearing grantedPTAB · May 3, 2016 · IPR2014-01427 · APJ Michael W Kim · IPR · Rehearing
The Board granted rehearing only as to the assertions it addressed and denied the rest, finding no rehearing basis for the unbriefed “extending between” issue.
RulingsRehearing decision- RehearingRehearing, grantedRehearing, deniedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 2
- Strike new argumentNew argument disregardedDecided for petitioner
“proceeding that could plausibly be considered as being directed to “extending between.” Substantively, the only place in this proceeding where arguments and evidence were asserted concerning “extending between” was in the oral hearing transcript, which Patent Owner correctly identifies as being directed to both proceedings, and, thus, the contents of which are equally applicable to both proceedings. Paper 54, 3:18–23. As set forth expressly in our Office Patent Trial Practice Guide, however, “[n]o new evidence or arguments may be presented at the oral argument.” 77 Fed. Reg. at 48,768. See also Dell Inc. v. Acceleron, LLC, 2016 WL 1019075, *6, *7 (Fed. Cir. Mar. 15, 2016) (“the Board denied Acceleron its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after Acceleron could meaningfully respond.”). Accordingly, when the oral hearing transcript is excluded from consideration, there is no argument or asserted evidence concerning “extending between” in this proceeding. Of course, there is asserted evidence, along with arguments providing context to that evidence, in the substantive papers for the other proceeding. In asserting that the Board should consider those arguments, Patent Owner asserts that claim constructions should be consistent across proceedings. We would agree with Patent Owner if the evidence and arguments presented in the two proceedings were consistent. Such is not the case here. Indeed, even if we were to import some arguments from the other proceeding, they would be directed solely to a proper construction of “extending between,” with no explanation of the relevance of “extending between” to the combination of Denney and Furuhashi in the instant proceeding, as that combination was not at issue in the other proceeding.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“claim construction of “extending between” in a Final Written Decision of related proceeding IPR2014-01428 (Ex. 2095, “other proceeding”). Specifically, Patent Owner asserts that if that claim construction of “extending between” from the other proceeding were applied in the instant proceeding, the record would show that the prior art asserted in the instant proceeding is missing a claim element recited in every challenged independent claim, and, thus, the Board’s determination that independent claims are unpatentable cannot be maintained. When considered in the confines of a request for rehearing, this is a straightforward case. By Patent Owner’s own acknowledgment, no proposed claim construction concerning “extending between,” much less any assertion concerning its relevance to proffered prior art, was considered in the Final Written Decision for the instant proceeding. This should come as no surprise, as it is undisputed that no argument or evidence has been advanced in any substantive paper, and, thus, no evaluation of any argument or evidence has been conducted, concerning this issue, in the instant proceeding. Absent such argument or evidence, Patent Owner has not, and cannot, identify that which the Board misapprehended or overlooked in the instant proceeding, as required by the Office Patent Trial Practice Guide. And without such identification, we are unpersuaded that there is any basis for a request for rehearing, in that it certainly cannot be said that the Board misapprehended or overlooked that which was not argued.” slip op. at 2
Claim constructionPatents in suitUS 8,596,405 - Square, Inc. v. Think Computer CorporationRehearing grantedPTAB · Feb 9, 2016 · CBM2014-00159 · APJ Michael W Kim · CBM · Rehearing
The Board granted Patent Owner’s rehearing request insofar as it addressed the assertions in the decision, but denied it in all other respects; the prior analysis remained unchanged.
RulingsRehearing decision- RehearingRehearing, grantedGranted in part
“A request for rehearing can only point out that which the Board misapprehended or overlooked, and will be reviewed for abuse of discretion. 37 C.F.R. § 42.71(d). Moreover, as the moving party, the burden of persuasion falls on Patent Owner. 37 C.F.R. § 42.20(c). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and where each matter was previously addressed in a motion, an opposition, or a reply. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).” slip op. at 1
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“are unpersuaded that they would alter our construction. For example, Patent Owner asserts that the claim limitation “any particular transaction” requires that “bidirectional account” be construed as allowing an account to function simultaneously as both a merchant account and a purchaser account under all transactions. We disagree, primarily because we are unclear as to what Patent Owner means by “under all transactions.” The relevant limitation of independent claim 1 reads “wherein the first account and the second account are adapted to selectively function as either a merchant or a purchaser account during any particular transaction.” We find that “[a]ny particular transaction” means any specific transaction, and is not necessarily limited to all transactions going forward, and find further that, logically, an account need only function in “merchant mode” or “purchaser mode” for that particular transaction; otherwise the account would be in the awkward position of performing a transaction with itself. Moreover, we are unclear as to why the same account cannot function as both, depending on the transaction, as an account is merely a repository within which funds are held, and whether the account is in “merchant mode” (i.e., the ability to send funds from the account) or “purchaser mode” (i.e., the ability to send funds to the account) does not alter the fundamental repository nature of the account itself. A similar analysis of the cited portions of the prosecution history and Specification yields similar conclusions. For example, Patent Owner’s discussion of the prosecution history on pages 4 and 5 of the Request for Rehearing do not amount to Patent Owner providing an explicit definition of “selectively function,” “during any particular transition,” or any other claim term as meaning “simultaneously”; nor do Patent Owner’s statements rise to the level of a clear and unmistakable disclaimer with respect to the meaning of the claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. whether Dalzell fails to meet the claims’ requirements Based on Patent Owner’s proposed claim construction of “bidirectional accounts,” Patent Owner asserts that Dalzell does not disclose “bidirectional accounts.” Req. 7‒10. As we are unpersuaded, however, that the Board misapprehended or overlooked the items identified by Patent Owner in construing “bidirectional accounts,” we are unpersuaded that our analysis of Dalzell and “bidirectional accounts” set forth on pages 28 to 29 of the Final Written Decision should be modified in any way. See Dec. 29 (“[W]e find that a more logical reading of paragraph 59 of Dalzell is that a buyer, from a particular account, can add a seller feature to that particular account, without the need to create a whole new account. Such a finding is supported by extensive analysis and testimony by Dr. Sadeh-Koniecpol, with explicit citations to Dalzell, which we find credible, reasonable, and persuasive. Ex. 1002 ¶¶ 147-164 (citing Ex. 1006 ¶¶ 9, 27, 49, 57, 61, 82, 85, 87, 132, 163, Figs. 1A, 1B).”)” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,396,808
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.