- PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the 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.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Apr 17, 2024 · IPR2022-00615 · APJ Jon M Jurgovan · IPR · Final written decision
Claim 16 is unpatentable as obvious over Ellsberry; the Board did not reach the Perego-422 grounds because Ground 3 was dispositive.
RulingsFinal written decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“We entered an Order for Petitioner to complete the additional discovery as authorized by the Director, and for the parties to propose a briefing schedule for the additional discovery. Paper 42. Petitioner filed the authorized additional discovery as exhibits and a Summary of Responses to the Additional Discovery (Paper 46) along with a Motion to Seal (Paper 43), which we granted (Paper 49). We then authorized a schedule for the parties to brief the applicability of the additional discovery to the issue of whether Google was a real party in interest and the Petition thus time-barred under 35 U.S.C. § 315(b). Papers 51–57. After consideration of the evidence, we determined by Order on Remand from the Director (Paper 62 (parties and Board), Paper 64 (public)) that Google was not a real party in interest and that this proceeding thus was not time-barred.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After briefing on the additional discovery but before our Order on Remand from the Director, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas, LLC (“the Micron entities”) filed a petition and requested joinder to this proceeding. IPR2023-00203, Papers 1, 3. We granted the Micron entities’ petition for inter partes review and joined them as parties on the petitioner side of this case. Id. at Paper 8. A copy of that institution decision was entered in this proceeding. Paper 58. We refer to Samsung and the Micron entities together as “Petitioner” in this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we accept Petitioner’s statement of the level of ordinary skill in the art except that we omit the qualifiers “at least” before years of education and experience because they render the level ambiguous and may encompass levels that are beyond ordinary. Otherwise, we find Petitioner’s statement of the level of ordinary skill in the art consistent with the ’912 patent and the applied prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“However, the subsequent emphasized sentences (id. at 8:54–60) could only be understood in favor of Petitioner’s interpretation. If “the command signal is passed through to both associated ranks” and “the command signal is sent to both memory devices,” each rank must have only one memory device. Thus, we agree with Petitioner that this passage means that a rank may have only one memory device. Patent Owner argues that this paragraph of the ’912 patent (id. at 8:44–64) must be read in conjunction with its Figures which show multiple memory devices per rank. PO Resp. 7 (citing Ex. 1001, 6:31–38, 20:64–65, 22:34–35, Figs. 1A, 1B, 2A, 3A; Ex. 2062 ¶¶ 106–107). However, the disputed paragraph refers to “certain embodiments” which do not necessarily correspond exactly to what the Figures depict, and the Figures are described as “exemplary” and “compatible with” or “in accordance with certain embodiments described herein.” See, e.g., Ex. 1001, 3:32–48. We find no statement here or elsewhere in the ’912 patent that a rank must include multiple memory devices, and cannot include a single memory device.” slip op. at 18
Patent outcomesUS 7,619,912 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,619,912 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01193 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“c) Conclusion for Claim 1 We find that the combination of Jenne and Cohen teaches the subject matter recited in claim 1 and that a person of ordinary skill in the art would have combined the teachings of Jenne and Cohen in the manner asserted by Petitioner with a reasonable expectation of success in arriving at the subject matter recited in claim 1. Patent Owner’s asserted objective evidence of non-obviousness lacks nexus and does not undermine Petitioner’s showing. Therefore, we conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Jenne and Cohen.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems. Significantly more practical experience could also qualify one not having the aforementioned education as a person of ordinary skill in the art while, conversely, a higher level of education could offset a lesser amount of experience. Pet. 12–13 (citing Ex. 1003 ¶ 96). Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of 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.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 308. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 289 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner, that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 9,892,287 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,892,287 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01190 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of 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.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 310 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Id. ¶ 321. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 292 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01191 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. INTRODUCTION In these inter partes reviews, Google LLC and Microsoft Corporation (collectively “Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent 10,789,393 B2 (Ex. 1001 (“’393 patent”)), which is owned by Carolyn W. Hafeman (“Patent Owner”). Petitioner requests that we consolidate these cases. IPR2022-01190, Paper 24 at 1. Patent Owner opposes. IPR2022-01190, Paper 28 at 1. Because these cases address the same claims, we grant Petitioner’s request to consolidate them pursuant to 37 C.F.R. § 42.122(a). See also 35 U.S.C. § 315(d) (giving Director discretion to consolidate proceedings).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of 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.” slip op. at 6
- Expert testimonyPatent owner expert discountedDecided for patent owner
“security by keeping ownership indicia constant after the initial set-up or configuration change.” PO Resp. 32 (citing Ex. 2040 ¶ 54(b)). Patent Owner cites the following testimony from Dr. Schaefer to support this assertion: Cohen discloses a method where the owner enters “a textual indicia of personal ownership” “during set-up or during a configuration change.” Cohen is specifically designed to keep ownership indicia constant. Although Cohen states that ownership indicia can be stored in RAM or nonvolatile memory, Cohen makes clear that nonvolatile memory is preferred because it cannot be altered, whereas ownership information stored in the RAM could be “easily defeated” by removing the battery. Thus, Cohen’s objective is to keep its local ownership indicia constant after an initial set-up or configuration change. Ex. 2040 ¶ 54(b) (citing Ex. 1006, 2:31–35, 4:50–5:4); see PO Resp. 29 (quoting this testimony), 32 (citing this testimony). We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Pet. 9–11. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Pet. 12. Patent Owner disagrees with Petitioner’s claim construction arguments. PO Resp. 9–21. For her part, Patent Owner argues that the terms “computer recovery information,” “recovery information,” and “return information” mean “information provided by the owner so that the device can be returned to the owner,” and she argues that “owner” means “the person or entity that owns, rents, or licenses the recovery application or program, and/or the person or entity who controls the recovery service.” PO Resp. 21 (citing Ex. 1001, 3:33–34, 4:4–5, 4:49–51, 11:11–13; Ex. 2035, 6–7, 19–20). As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - PTAB · Jun 7, 2023 · IPR2023-00203 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of claim 16 on the petition’s challenges and joined Micron as a petitioner in IPR2022-00615 after finding a reasonable likelihood of success over Ellsberry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination. As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 615 IPR.” slip op. at 13
- BurdenNot reached
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“described with reference to Table 1 refer to transmitting a command signal to one of the multiple memory devices in the selected rank.” Prelim. Resp. 8. On this record, we disagree with Patent Owner’s interpretation of this passage. The ’912 patent states that Table 1 is a logic table “for the selection among ranks of memory devices 30 using chip-select signals.” Ex. 1001, 7:56–58. We see nothing in Table 1 that indicates a further selection of memory devices within each rank. On this record, and for purposes of institution, we agree with Petitioner that the ’912 patent’s description of sending the command signal “to only one memory device or the other memory device” by reference to logic showing the selection of one rank or another tends to show that a rank may have one memory device. See Pet. 12–13. At least for this preliminary decision, we determine that “rank” refers to “one or more memory devices.” We do not construe the term further at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties are not precluded from arguing the proposed construction of “rank” in subsequent briefing at trial. Our final claim construction, if any, will be determined on the full record at trial.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,619,912 - Samsung Electronics Co., Ltd / Dell Technologies Inc. et al. v. Mypaq Holdings Ltd.All claims unpatentablePTAB · May 17, 2023 · IPR2022-00312 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–20 under Hirst and Chagny grounds, and claims 3, 12, 13, and 19 also under Chagny and Clark.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“20 Pet. 10. Patent Owner filed a Preliminary Response. Paper 7. With our authorization, Samsung and Dell filed a reply to the Preliminary Response (Paper 9) addressing discretionary denial issues, and Patent Owner filed a sur-reply (Paper 10). We instituted trial on the asserted grounds of unpatentability. Paper 11 (“Inst. Dec.”) at 30.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, Anker filed a motion for joinder and a petition in IPR2022-01131. We joined Anker as a petitioner in this proceeding. Paper 18.” slip op. at 3
- Skill levelSkill level board ownDecided for patent owner
“We agree with Patent Owner that some degree of familiarity with power electronics would be necessary for a POSITA given the subject matter at issue, and we understood this to be implicit in part (i) of Petitioner’s definition. To address Patent Owner’s concern, we clarify that a person with a Master of Science in Electrical Engineering or an equivalent field would need experience in power electronics to qualify as a POSITA. We are reluctant to use Patent Owner’s formulation of “some independent expertise in power electronics” (PO Resp. 17–18 (emphasis added)) because it could be read to include an expert level of skill rather than an ordinary level of skill. Thus, we determine that a POSITA would have had either (i) a Master of Science in Electrical Engineering, or an equivalent field, and experience in power electronics or (ii) a Bachelor of Science in Electrical Engineering or an equivalent field as well as two years of experience in the design of power electronics.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownNo construction neededDecided for petitioner
“We do not agree with Patent Owner’s interpretation of the term “system operational state of said load.” As an initial matter, Patent Owner does not direct us to, and we do not find, a definition of “system operational state” of a load in the ’759 patent. As noted above, Patent Owner’s proposed definition is that “the term ‘system operational state’ as it pertains to engineering systems, refers to the way in which the system as a whole is being employed or utilized.” PO Resp. 18–19 (citing Ex. 2018 ¶ 51). Claims 1, 6, and 16, however, recite “a system operational state of [a/said] load” (emphasis added), not the system as a whole. Patent Owner’s proposed construction, therefore, is not consistent with the claim language. Patent Owner points to examples disclosed in the ’759 patent in an attempt to narrow the meaning of the claim term and, as further discussed below, to distinguish the prior art. See PO Resp. 19–20 (“The ’759 Patent provides examples of signals indicating system operational states including signals . . . .” (citing Ex. 1001, 7:17–28)); see also PO Resp. 46–47 (similar argument citing Ex. 1001, 7:16–28). But the ’759 patent states that these are non-limiting examples. Ex. 1001, 7:16–17 (“Further examples indicating a system operational state include, without limitation . . . .”). One passage cited by Patent Owner states the following: with different operating states. For example, a server configured to process financial data may operate at a higher level of criticality during normal business hours, and revert to a lower processing state at another time of day. The aforementioned system may require a higher level of performance from the power converter during such periods of high criticality, which may compromise operating efficiency, but which may admit higher operating efficiency during substantial periods of time in the lower processing state. Ex. 1001, 3:55–64, quoted in PO Resp. 20–21, 47. Patent Owner argues that this passage “illustrates the difference between operational states and system activity at a particular moment” because, according to Patent Owner, “[i]n this example, the system operational state may be in a critical or non-critical state depending on the given performance constraints at a particular time of day.” PO Resp. 20–21; see also PO Resp. 47 (similar argument). We disagree. The ’759 patent passage above effectively correlates processor activity and criticality by saying that, in a period of “high criticality,” the load requires a higher performance level from the power converter than when the load is in a “lower processing state.” Ex. 1001, 3:55–64. Thus, this example shows that a “lower processing state” of a data processing server is a “system operational state” of that server, notwithstanding Patent Owner’s labeling this as a “non-critical state.” See PO Resp. 21. Patent Owner argues that “two processors in two different systems may have the same activity level at some point in time” but may be in different system operational states because, for example, speed is critical with one processor and energy efficiency is critical with the other. PO Resp. 48–49 (citing Ex. 2018 ¶¶ 97–98). Similarly, Dr. Ferrese posits an analogy in which two vehicles are traveling at the same speed but one is carrying a person to a hospital and the other is carrying a family on a road “in a given instant appear to be operating identically,” they “can actually have significantly different system operational states resulting in different preferences in terms of how they are operated and controlled.” Ex. 2018 ¶ 97. These hypotheticals are not persuasive, as they would introduce subjectivity into the claim construction, requiring inquiry into the purpose or intent of a processor’s operation. Furthermore, these hypotheticals are not helpful in resolving the controversy because Petitioner relies on the different activity levels in the prior art as disclosing different system operational states, as discussed below in sections II.D.2.b and II.G.2.a. Thus, we need not opine on whether one activity level of a processor could result in multiple system operational states.” slip op. at 9
Patent outcomesUS 7,675,759 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,675,759 - Samsung Electronics Co., Ltd / Dell Technologies Inc. et al. v. Mypaq Holdings Ltd.All claims unpatentablePTAB · May 17, 2023 · IPR2022-01134 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–20 are unpatentable: Chagny anticipates claims 1–12, 14–17, 19, and 20, and renders claims 13 and 18 obvious; remaining grounds were not reached.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, Anker filed a motion for joinder and a petition in IPR2022-01134. We joined Anker as a petitioner in this proceeding. Paper 18.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that some degree of familiarity with power electronics would be necessary for a POSITA given the subject matter at issue, and we understood this to be implicit in part (i) of Petitioner’s definition. To address Patent Owner’s concern, we clarify that a person with a Master of Science in Electrical Engineering or an equivalent field would need experience in power electronics to qualify as a POSITA. We are reluctant to use Patent Owner’s formulation of “some independent expertise in power electronics” (PO Resp. 17 (emphasis added)) because it could be read to include an expert level of skill rather than an ordinary level of skill. Thus, we determine that a POSITA would have had either (i) a Master of Science in Electrical Engineering, or an equivalent field, and experience in power electronics or (ii) a Bachelor of Science in Electrical Engineering or an equivalent field as well as two years of experience in the design of power electronics. We would reach the same determinations on Petitioner’s patentability challenges in §§ II.D–E below even if we adopted Patent Owner’s assessment of a person with a Master of Science degree and “some independent expertise in power electronics (through work or otherwise),” which is a higher level of skill.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“system operational state of said load.” As an initial matter, Patent Owner does not direct us to, and we do not find, a definition of “system operational state” of a load in the ’514 patent. As noted above, Patent Owner’s proposed definition is that “the term ‘system operational state’ as it pertains to engineering systems, refers to the way in which the system as a whole is being employed or utilized.” PO Resp. 18 (citing Ex. 2018 ¶ 52). Claim 1, however, recites “a system operational state of said load” (emphasis added), not the system as a whole. Patent Owner’s proposed construction, therefore, is not consistent with the claim language. Patent Owner points to examples disclosed in the ’514 patent in an attempt to narrow the meaning of the claim term and, as further discussed below, to distinguish the prior art. See PO Resp. 18–20 (“The ’514 Patent provides examples of signals indicating system operational states that include signals . . . .” (citing Ex. 1001, 9:14– 27)). But the ’514 patent states that these are non-limiting examples. Ex. 1001, 9:11–23 (“Further examples indicating a system operational state include, without limitation . . . .”). One passage cited by Patent Owner states the following: It should also be taken into account that there are loads with different operating states. For example, a server configured to process financial data may operate at a higher level of criticality during normal business hours, and revert to a lower processing state at another time of day. The aforementioned system may require a higher level of performance from the power converter during such periods of high criticality, which may compromise operating efficiency, but which may admit higher operating efficiency during substantial periods of time in the lower processing state. Ex. 1001, 5:8–17, quoted in PO Resp. 20. Patent Owner argues that this passage “illustrates the difference between operational states and system this example, the system operational state may be critical or non-critical depending on the performance constraints at particular time of day.” PO Resp. 20 (citing Ex. 2018 ¶ 53). We disagree. The ’514 patent passage above effectively correlates processor activity and criticality by saying that, in a period of “high criticality,” the load requires a higher performance level from the power converter than when the load is in a “lower processing state.” Ex. 1001, 5:8–17. Thus, this example shows that a “lower processing state” of a data processing server is a “system operational state” of that server, notwithstanding Patent Owner’s labeling this as a “non-critical” operational state. See PO Resp. 20. Patent Owner argues that “two processors in two different systems may have the same activity level at some point in time” but may be in different system operational states because, for example, speed is critical with one processor and energy efficiency is critical with the other. PO Resp. 21–22 (citing Ex. 2018 ¶¶ 55–56). Similarly, Dr. Ferrese posits an analogy in which two vehicles are traveling at the same speed but one is carrying a person to a hospital and the other is carrying a family on a road trip. Ex. 2018 ¶ 55. Dr. Ferrese states that, even though these two vehicles “in a given instant appear to be operating identically,” they “can actually have significantly different system operational states resulting in different preferences in terms of how they are operated and controlled.” Ex. 2018 ¶ 55. These hypotheticals are not persuasive, as they would introduce subjectivity into the claim construction, requiring inquiry into the purpose or intent of a processor’s operation. Furthermore, these hypotheticals are not helpful in resolving the controversy because Petitioner relies on Chagny’s different activity levels as disclosing different system operational states, as one activity level of a processor could result in multiple system operational states. slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“other words, the duty cycle is the “ratio of on-time to the total switching period.” Ex. 1002 ¶ 38. We find that Chagny describes a duty cycle because Chagny discloses that charge switch 220 is turned on and off. See, e.g., Ex. 1004, 5:38–40 (“The opening and closing of the charge and discharge switches 220 and 230 is controlled by the charge and discharge control signals 212 and 214 respectively.”). Patent Owner agrees that charge switch 220 is turned on and off. See Tr. 43:23–44:1 (Q: “Is Patent Owner disputing that there is a conduction time in Chagny that the FET is turned on and off?”; A: “The FET is turned on and off, yes, so that’s correct.”); see also Tr. 45:11–12 (Patent Owner’s counsel stating that “it certainly is turning the FET on and off”). Thus, Chagny discloses that power switch 220 has a duty cycle notwithstanding Patent Owner’s argument that “Chagny does not even discuss duty cycles.” See PO Resp. 33. As to Patent Owner’s argument that “activity input 202 sets the switching frequency, not the duty cycle” (PO Resp. 33), we agree with Petitioner that “[t]here is no requirement that said signal indicating system operational state must ‘set’ the duty cycle.” See Pet. Reply 19–20. Petitioner contends that, because the duty cycle of charge switch 220 determines the output voltage and because that output voltage is then used as feedback to regulate the output voltage (Ex. 1004, 4:63–65), a person of ordinary skill in the art would have understood that the duty cycle of charge switch 220 is controlled “as a function of the feedback from the regulated DC voltage output 295 (i.e., as function of said output characteristic).” Pet. 21 (citing Ex. 1002 ¶ 72; Ex. 1009, 17–18). As to Patent Owner’s argument that Petitioner “cannot rely on knowledge of a POSITA to prove anticipation by Chagny” of ordinary skill in the art would have understood from Chagny’s disclosure. This is appropriate and indeed necessary because “[a]nticipation is established when ‘one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim [limitation] was disclosed in that single reference.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1338 (Fed. Cir. 2017) (quoting Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192–93 (Fed. Cir. 2003)). We also credit Dr. Kiaei’s unrebutted testimony that, “for a buck power converter, the output voltage is equal to the input voltage times the duty cycle of the high-side switch (referred to as charge switch [220] in Chagny).” Ex. 1002 ¶ 57. As noted above, Chagny discloses that “controller module 210 receives the regulated DC voltage output 295 as a feedback input for regulating the output of the VRM 200.” Ex. 1004, 4:63– 65, cited in Pet. 21. Thus, we find that Chagny discloses controlling the duty cycle as a function of the output voltage in order to regulate the output voltage as part of the feedback loop.” slip op. at 35
Patent outcomesUS 8,477,514 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,477,514 - Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentablePTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision
Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20
Patent outcomesUS 9,462,074 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,462,074 - EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCAll claims unpatentablePTAB · Jun 20, 2018 · IPR2017-00374 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1, 3–9, 13, 15, 16, and 18–21 are unpatentable as obvious over OceanStore; anticipation and the OceanStore–Condor combination were not established, nor was claim 17 obvious over OceanStore.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The parties dispute the proper construction of the limitation “[r]epresenting with the corresponding software-based NAS component that the selected distributed devices respectively comprise NAS devices” as recited in claims 1 and 13. See Pet 11–12; PO Resp. 8–11; Reply 3–8. Specifically, the parties proposed the following constructions: Petitioner “using the corresponding software-based NAS components of the selected distributed devices to mimic dedicated NAS devices”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider the claim as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements, especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5–6. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. at 6 (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, at the time “of the ’827 patent, one of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Based on the record before us, we are not satisfied Petitioner has shown adequately for an anticipation challenge that OceanStore discloses “wherein the respective client agents for particular distributed devices of the plurality of distributed devices have corresponding software-based network attached storage (NAS) components configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices” as recited in claim 1 and similarly recited in claim 13. Although it appears OceanStore discloses distributed routing in order to find and fulfill a request for an entity with a GUID (global unique identifier) (see Ex. 1003, 193), there does not appear to be an explicit disclosure that any software-based network attached storage (NAS) component on a distributed device assesses unused or under-utilized storage resources in selected distributed devices. Nor does Petitioner adequately explain how such an assessment would be inherent in the disclosure of OceanStore. We note that Petitioner cites to the prosecution history of the ’827 patent while making arguments regarding claim construction. See Pet. 12 n2. Although the ’827 patent prosecution history states that its “client agent programs must be capable of assessing what capabilities are spare and/or unused (unused or under-utilized)” (Ex. 1015, 8), such a statement by the patent applicant does not relieve Petitioner of its burden to point out where such a feature is found in the prior art reference that forms the basis of its anticipation challenge. Accordingly, we determine Petitioner has not established by a preponderance of the evidence that OceanStore describes this limitation of claims 1 and 13. d. Summary Petitioner has failed to demonstrate that OceanStore describes every limitation of claims 1 and 13. Accordingly, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 1 and 13 are anticipated under 35 U.S.C. § 102(a) based on OceanStore. 3. Analysis of Cited Art as Applied to Dependent Claims 3–9 and 15–21 Petitioner contends dependent claims 3–9 and 15–21 of the ’827 patent are unpatentable under 35 U.S.C. § 102(a) in view of OceanStore. Pet. 36–44, 46. For the same reason as discussed above in regard to independent claims 1 and 13 above, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 3–9 and 15–21 of the ’827 patent are anticipated under 35 U.S.C. § 102(a) based on OceanStore.” slip op. at 25
Patent outcomesUS 8,275,827 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 8,275,827
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.