• Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision

  Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7

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

    “an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15

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

    “Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35

  Patent outcomesUS 9,413,722 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,413,722
• Ralph Lauren Corporation v. Lexos Media IP, LLCSome claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01755 · APJ Sharon Fenick · IPR · Final written decision

  Claims 27, 33, 40, 41, 72, 81, and 82 are unpatentable under § 103; the remaining challenged claims are not determined unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision issues under 35 U.S.C. § 318(a). Having considered the evidence of record, and for the reasons discussed below, Petitioner has demonstrated by a preponderance of the evidence that claims 27, 33, 40, 41, 72, 81 and 82 of the ’449 patent are unpatentable under 35 U.S.C. § 103(a), but has not demonstrated by a preponderance of the evidence that claims 1–3, 5–7, 12– 15, 28, 29, 31, 32, 38, 39, 53–56, 58–63, 73–75, and 77–80 of the ’449 patent are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art would have had “at least a master’s degree in Computer Science, Computer Engineering, or a related field, or hold a bachelor’s degree in Computer 4 The record contains no evidence relating to secondary considerations. Science, Computer Engineering, or equivalent and have at least two years of relevant work experience in the fields of UI [(user interface)] design and OSs.” Pet. 10–11. In the Institution Decision, we preliminary adopted Petitioner’s proposed definition, noting that the prior art in this case demonstrated the level of ordinary skill in the art at the time of the invention. Inst. Dec. 10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). Patent Owner does not comment on or dispute Petitioner’s proposal, and instead cites Okajima’s holding regarding the level of skill in the prior art without raising any issues regarding whether the prior art here reflects a level of ordinary skill different from that proposed by Petitioner. PO Resp. 10 (citing Okajima, 261 F.3d at 1355). We adopt Petitioner’s definition as consistent with the ’449 patent and the asserted prior art.” slip op. at 10

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

    “Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). The Petitioner proposed construction of several claim terms in the Petition. Pet. 12–18. However, none of these claim terms require construction to resolve the controversy. Petitioner also argued for a construction of an additional term (“wherein said specified content information further comprises information to be displayed on said display of said user’s terminal”) in its Reply. Pet. Reply 13. Patent Owner contends that this argument is a new argument raised improperly for the first time in the Reply. PO Sur-Reply 10–11. We agree. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding ... patent owner response.” See also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not abuse its discretion in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369–1370 (Fed. Cir. 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Therefore, we will not address the new construction proposed for this claim term.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “A petitioner must choose which grounds of invalidity to assert in the petition and “the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Intelligent Bio- Sys., 821 F.3d at 1369 (Fed. Cir. 2016); Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Circ. 2017) (a petitioner is foreclosed from “shifting” in post-petition arguments to a new theory of prima facie obviousness based on a different passage of a prior art reference than was used in the petition); see PTAB Consolidated Trial Practice Guide November 2019,5 73 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie 5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated case of unpatentability.”); Trial Practice Guide Update August 2018,6 14 (same). Therefore, we evaluate Petitioner’s arguments with respect to limitation [c.i] relying upon Malamud’s message relating to a preview cursor in Malamud to teach the “specified content information.” Patent Owner does not make any arguments relating to whether Malamud’s message, in view of the teachings of Anthias, teaches limitation [c.i] of claim 1. See, e.g., PO Resp. 9–18.” slip op. at 19

  Patent outcomesUS 6,118,449 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,118,449
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 11, 2020 · IPR2018-01498 · APJ J John Lee · IPR · Final written decision

  Claims 4, 7–9, 12, 14, 16, 18, and 19 are unpatentable as obvious over the Bergen/Reimer and Armstrong grounds, with Abecassis for specified claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 9 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does 2 U.S. Patent Application Publication No. 2007/0250901 A1, published Oct. 25, 2007 (Ex. 1004, “McIntire”). 3 U.S. Patent No. 6,965,890 B1, issued Nov. 15, 2005 (Ex. 1023, “Dey”). 4 U.S. Patent No. 6,038,367, issued Mar. 14, 2000 (Ex. 1024, “Abecassis”). 5 U.S. Patent No. 6,956,573 B1, issued Oct. 18, 2005 (Ex. 1028, “Bergen”). 6 U.S. Patent No. 5,696,905, issued Dec. 9, 1997 (Ex. 1005, “Reimer”). 7 U.S. Patent Application Publication No. 2007/0003223 A1, published Jan. 4, 2007 (Ex. 1021, “Armstrong”). not dispute Petitioner’s formulation of the level of skill in the art. Based on the information and testimony presented with the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 10. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’282 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 7–8. We determine that no claim terms of the challenged claims in the ’282 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). To the extent any interpretation of claim language is necessary, we address those issues in the context of our unpatentability analysis below. C.” slip op. at 7

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

    “playing in response to the request for information.” Petitioner argues that a person of ordinary skill would have recognized that presenting results of a request/query could interfere with viewing the video, and, thus, pausing the video would have been obvious given that it would have been “trivial” for the artisan to implement such a “ubiquitous” feature. Pet. 51–52 (citing Ex. 1002 ¶ 148). Additionally, the Petition cites Reimer as teaching this limitation. Id. at 52. Specifically, Petitioner notes that Reimer teaches using the “Pause” button of a remote control to initiate a query. Id. (citing Ex. 1005, 16:7–14). According to Petitioner, a skilled artisan would have been motivated to combine this feature of Reimer with Bergen because the two references are directed to similar systems, and doing so would constitute the use of a known technique (pausing) to improve Bergen’s system in the same way it improves Reimer’s system. Id. (citing Ex. 1002 ¶¶ 151–152; KSR, 550 U.S. at 417). We agree with Petitioner’s analysis and find that the combination of Bergen and Reimer teaches each limitation of claim 12. Also, we find that Petitioner has articulated a sufficient rationale that would have motivated a person of ordinary skill to combine those teachings. Thus, Petitioner has established by a preponderance of the evidence that claim 12 is unpatentable as obvious over Bergen and Reimer.” slip op. at 20

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

    “(id.)—in other words, the user sees the depicted item in Frame A but, due to reaction time, does not transmit the request for supplemental content about the item until Frame B, which is later in time and which may not depict that item any longer. See id. ¶ 272. In McIntire’s system, the supplemental content would be mapped to both Frame A and Frame B so that when the system receives the request at Frame B, it nonetheless retrieves the supplemental content for the item depicted in Frame A because it was also mapped to Frame B. See id. ¶ 140. This enables the system to identify “one or more articles appearing in the media stream at or around the point in time at which” the user request was received, because the articles are mapped to identifiers representing multiple frames at or around the time the articles appeared. See id. ¶ 310 (emphasis added). But though Frame A and Frame B may be different segments with different segment identifiers, they are both mapped to the same supplemental content. See id. Thus, displaying that content may be considered displaying information associated with both identifiers, but it is the same information, whereas the challenged claims require the information to be different. Petitioner argues that McIntire teaches displaying different information by virtue of the fact that the two segment identifiers it relies on represent two different segments. Pet. Reply 5–6. As discussed above, however, McIntire describes mapping the identifiers to the same content, even when they represent different segments/frames. Next, Petitioner notes that the items depicted in the video change from segment to segment, which creates the user delay problem. Id. at 6. According to Petitioner, “the purpose of identifying additional frame identifiers ‘around’ the current location and retrieving supplemental content for multiple [identifiers] is to display different information associated with previously depicted items that are not depicted in later locations.” Id. Petitioner is correct that McIntire discloses displaying information associated with previously depicted items, which may be different than information associated with items depicted in the current segment (because the items are different). Still, Petitioner has not addressed how McIntire teaches also displaying the information associated with items depicted in the current segment contemporaneously. McIntire’s discussion of the user delay problem teaches that the user is requesting information regarding the previously depicted items, not both the previous items and the current items contemporaneously, due to reaction time. See Ex. 1004 ¶ 272. That is why McIntire describes mapping both the previous and current segment identifiers to the information about the previously depicted items, not the currently depicted items. See id. ¶ 140. Petitioner also contends that a person of ordinary skill in the art would have known about the user delay problem, and that artisans “were motivated to solve it by providing different supplemental content associated with video frames before the request location,” which was within an ordinary artisan’s skill. Pet. Reply 6–7. Essentially, Petitioner’s argument amounts to a contention that the background knowledge of a person of ordinary skill would have supplied this limitation even if it was not taught by McIntire. Such a theory is untimely and will not be considered because it was not advanced in the Petition. See Pet. 28–29; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).” slip op. at 44

  Patent outcomesUS 9,380,282 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,380,282
• Amazon.Com, Inc. v. Customplay, LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01496 · APJ J John Lee · IPR · Final written decision

  Claims 4–6 and 10–20 are unpatentable as obvious under the stated § 103(a) grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, or computer science, as well as three years of experience in the design of digital video systems. Pet. 10–11 (citing Ex. 1002 ¶¶ 24–26). Patent Owner does not dispute Petitioner’s formulation of the level of ordinary skill in the art. Based on the information and testimony presented in the Petition, we adopt Petitioner’s formulation. B.” slip op. at 6

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

    “Claim Construction For petitions filed before November 13, 2018, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Petitioner contends no express claim constructions are necessary to resolve the issues presented in the Petition. Pet. 11. Patent Owner contends the inventor acted as his own lexicographer in presenting a number of definitions in the Specification of the ’346 Patent, and asserts that these definitions should be used in this proceeding. PO Resp. 16. We determine that no claim terms of the challenged claims in the ’346 Patent require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy require express construction, and only to the extent necessary to resolve the controversy). C.” slip op. at 6

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

    “retrieving supplemental content, including “an image of the actress” (visual depiction of the performer), based on a mapping (reference) that associated that content to the segment depicting that actress. See Ex. 1004 ¶ 278; Pet. 28–29. Petitioner asserts inter alia that a skilled artisan would have been motivated to combine these teachings with the system in Thomas because displaying an actor’s image, as taught in McIntire, would have been a well-known technique applied in a conventional fashion to the similar device taught in Thomas to yield predictable results. See Pet. 29–30 (citing Ex. 1002 ¶ 68; KSR, 550 U.S. at 417). In addition, the Petition notes that Thomas teaches displaying “actor information” such as “biographical information” and “[a]ny other suitable information relating to . . . the actor,” which would have suggested to a skilled artisan to include images of the actor. Id. at 30 (quoting Ex. 1003 ¶ 106); Ex. 1002 ¶ 68. This analysis is persuasive, and its supporting evidence is credible and convincing.” slip op. at 19

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

    “such metadata from a service. Ex. 1006, 6:44–50. The Petition sets forth several reasons why a person of ordinary skill would have been motivated to combine these teachings, including that it constitutes a simple substitution of one known technique (Reimer’s request for actor information) for another similar technique (Clarke’s request for metadata) to obtain predictable results. Pet. 73–75 (citing KSR, 550 U.S. at 417). Although Patent Owner argues Clarke “teaches away” from the claimed user request and that the combination of Clarke and Reimer is based on impermissible hindsight, its positions are unpersuasive because they are conclusory and unsupported. PO Resp. 54–55. In particular, with regard to teaching away, Patent Owner fails to identify evidence indicating that a skilled artisan would have understood Clarke to “criticize, discredit, or otherwise discourage the solution claimed” in the ’346 Patent. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Based on the complete record, we find that this limitation is taught by the combination of Clarke and Reimer, and that an ordinary artisan would have been motivated to combine their teachings.” slip op. at 50

  Patent outcomesUS 8,494,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,346
• Cisco Systems, Inc. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Jan 23, 2020 · IPR2018-01386 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Narayanaswamy, Kapoor, Johnson, and Kjendal; claims 10–16 are unpatentable as obvious over those references and the Diffserv Specification.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert discountedOther

    “Patent Owner’s sole nexus explanation is a conclusory assertion that “the salutary benefits of Centripetal’s TIG [threat interface gateway] are made possible in large part by the ’213 patent’s dynamic security policies, which are automatically managed and distributed by the claimed SPM, as well as its network layer packet-by-packet rule enforcement, packet digest logging function and packet transformation function for routing packets to a monitoring device.” PO Resp. 62 (citing Ex. 2004, Goodrich Decl. ¶217). Dr. Goodrich’s testimony cited in support of this statement is merely a nearverbatim copy of this conclusory statement with no additional explanation. See Ex. 2004 ¶ 112; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). As a result, we find that Patent Owner has not established a sufficient nexus between the cited industry praise and the invention of the challenged claims.” slip op. at 57

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

    “Patent Owner further argues that our construction removes any patentable weight from the word “dynamic” because it does not explicitly state that the policy is “non-static.” PO Resp. 15–16. Patent Owner does not point to any use of the expression “non-static” in the ’213 patent Specification. In some embodiments, a dynamic security policy may be constructed or revised manually off line and loaded into SPMS memory by an administrator (Ex. 1001, 14:23–47); in other embodiments the SPMS may be configured to add, remove, or alter one or more dynamic security policies based on information received from devices within the network known to be associated with malicious traffic (id. at 14:48–15:37). As discussed above, however, the Specification explicitly states “As used herein, a dynamic security policy includes any rule message, instruction, file data structures, or the like that specifies criteria corresponding to one or more packets and identifies a packet transformation function to be performed on packets corresponding to the specified criteria.” Id. at 4:58–64. As our construction is consistent with that language, we decline to adopt Patent Owner’s construction.” slip op. at 10

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

    “and only now are contesting the construction of “packet-by-packet.” Indeed, we are not convinced that we should construe “packet-by-packet” when the phrase used in claim 1 is “on a packet-by-packet basis.” Both “packet-by-packet” and “on a packet-by-packet basis” are not defined in the Specification. It is unclear from the ’213 patent whether “on a packet-by-packet basis” requires inspecting every single packet, even if the preceding packet indicates there is no application-layer packet-header information in the following expected packet. On the other hand, as packets may arrive out of order, it appears that some inspection of each packet may be necessary. packet-by-packet basis” means performing the transformation function only on those packets that comprise the application-layer packet-header information specified in a rule. For example, claim 1 recites “identifying” such packets “on a packet-by-packet basis,” and then “performing . . . the packet transformation function” on such packets. In any case, we do not apply a construction that encompasses analyzing multiple packets at one time. However, the construction “working a packet at a time” offers little insight into what “on a packet-by-packet basis” actually means. At this late stage of the proceeding, we address this issue only to the extent necessary for this Decision in our substantive analysis of the claims, as explained below.” slip op. at 15

  Patent outcomesUS 9,565,213 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,565,213
• Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Institution denied
  PTAB · Jan 8, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted reference combinations.

  RulingsInstitution decision

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

    “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). After considering the Petition, the Preliminary Response, and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’253 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “ordinary skill in the art, including the type of problems encountered in the art and prior art solutions to those problems. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’253 patent and the prior art of record, we agree with some aspects of Petitioner’s proposal as well as some aspects of Patent Owner’s proposal. For instance, as indicated by its title, the ’253 patent is directed to a merchandise security system with optical communication. See Ex. 1001, code (54). Thus, we agree with Patent Owner that a person of ordinary skill in the art would at least have experience with optical communication technology. We also agree with Patent Owner that the invention disclosed in the ’253 patent is not limited to use as a point-of-purchase anti-theft device. See Prelim. Resp. 7–8 (citing Ex. 1001, 2:55–60). We disagree, however, with Patent Owner’s argument that experience with security systems is unnecessary. See id. In view of the ’253 patent and the principal prior art references in the record, which generally are directed to security systems, we find that a person of ordinary skill in the art would have some experience with security devices. The educational level of inventors and that of active workers in the field are also factors that may be considered. Daiichi, 501 F.3d at 1256. On the present record, we agree with Patent Owner’s more inclusive proposal regarding the educational level of a person skilled in the art. See Prelim. Resp. 8–9. review of the record, we find that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, mechanical engineering, materials science, or some equivalent level of education, and some work experience with the design of security devices and applications using optical communication technology. We note that, even if we adopted either Petitioner’s or Patent Owner’s proposed level of skill in the art in its entirety, our analysis below of Petitioner’s asserted obviousness grounds would not change and we would reach the same conclusions.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “signals.” Ex. 1001, 1:59–60, 1:62–63, 5:34–37; see Pet. 6. Citing definitions of “optical transceiver,” “optical receiver,” “optical transmitter,” and “transceiver” from a technical dictionary, Petitioner contends that “optical transceiver” should be construed as “an optical receiver and an optical transmitter housed in a single unit with appropriate electrical and optical connectors.” Pet. 6–7 (citing Ex. 1002, 347, 674, 676–77, 1022–23). For purposes of this Decision, we adopt Petitioner’s proposed construction of “optical transceiver,” which is consistent with the term’s use in the ’253 patent and its ordinary and customary meaning in the art. No other claim terms require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “its optical waveguide tether, including a spiral cable and a securing tether wound under tensile stress. Ex. 1003, 5; see Prelim. Resp. 12. Notwithstanding these embodiments in which the optical waveguide tether would be subject to bending, Brenner states that “the apparatus according to the invention also has the advantage of reduced susceptibility to faults, because the optoelectronic signal transfer device operates practically without wear.” Ex. 1003, 3; see Prelim. Resp. 12. Thus, contrary to Petitioner’s argument that bending or winding Brenner’s optical waveguide would create reliability issues, Brenner itself suggests that using an optical waveguide in” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,062,253
• General Electric Co. v. University Of Virginia Patent FoundationAll claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00359 · APJ J John Lee · IPR · Final written decision

  Claims 153–156, 161, 162, 252, and 253 are unpatentable as anticipated by Mugler 2000 and obvious over each of three stated reference combinations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims. Pet. 21–37. To anticipate a claim, a single prior art reference must disclose each and every limitation of the claim, either expressly or inherently. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A feature is disclosed inherently if it is necessarily present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). The Petition sets forth detailed contentions and supporting evidence demonstrating that Mugler 2000 discloses each limitation of the challenged claims either expressly or inherently. Pet. 21–37. GE’s analysis is persuasive and unrebutted. In its Patent Owner Response, UVAPF does not dispute that Mugler 2000 discloses each limitation of these claims and, thus, UVAPF has waived any such argument.17 Based on the full record after trial, GE has shown by a preponderance of the evidence that the challenged claims are anticipated by Mugler 2000.” slip op. at 23

  • Skill levelSkill level petitioner adoptedOther

    “Level of Ordinary Skill According to GE’s expert8 witness, Dr. Norbert J. Pelc, a person of ordinary skill in the art would have had “significant working knowledge of MR spin-echo imaging, especially fast-spin-echo imaging,” as well as “a Ph.D. in a physical science (e.g., electrical or biomedical engineering or medical physics) with experience in the development of MR imaging techniques, or an M.D. degree or an M.S. degree in a physical science with significant (3–5 years) of work experience in the development of MR imaging techniques.” Ex. 1009 ¶ 105. The expert9 witness proffered by” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Based on Dr. Pelc’s credible testimony, we find that a person of ordinary skill in the art would have met Dr. Pelc’s description. We further find that Dr. Hennig’s testimony on this issue does not differ materially from that of Dr. Pelc, and, in any event, our analysis in this Decision would be unchanged were we to apply Dr. Hennig’s description. C.” slip op. at 8

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

    “Claim Construction In an inter partes review, claim terms in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). No claim terms require express construction for purposes of this Final Written Decision.7 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). B.” slip op. at 7

  Patent outcomesUS RE44,644 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
• Ericsson Inc. / Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 8, 2017 · IPR2015-01664 · APJ Justin Busch · IPR · Final written decision

  The Board held claims 8–12 and 18–22 not shown unpatentable as obvious over Dulin, Yamaura, Zhuang, and Hwang because the combination did not teach the entire broadcast channel within the core-band.

  RulingsFinal written decision

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

    “Upon further review of the ’431 patent, particularly in view of Patent Owner’s arguments supported by Dr. Zeger’s testimony discussed above, we are persuaded that our preliminary partial construction was unreasonably broad to the extent that construction indicated the transmitting a broadcast channel limitation would be met by the transmission of a broadcast channel that is only partially within the core-band. Thus, we agree with Patent Owner that to show that the transmitting “a broadcast channel in an” OFDMA core-band limitation is met, Petitioner must demonstrate that the prior art teaches or suggests transmitting a broadcast channel, wherein the entire channel is contained within the core-band.” slip op. at 8

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

    “as calling signals) in a “broadcast burst” (including Yamaura’s BCH and FCH) using only a subset of the subcarriers near the center of the bandwidth that makes up the channel. Pet. 27–29, 36–37; PO Resp. 30; Ex. 1003, 1:65–67, 6:5–8, 20:65–67, 21:30–32, 24:6–14; Ex. 1012 ¶¶ 65–68. There is some ambiguity, however, regarding whether Yamaura transmits signals outside of its narrow band during the time slots assigned to the alleged broadcast channels BCH and FCH (e.g., SC1 and SC2 as depicted in Figure 17 of Yamaura). See Ex. 1003, 21:1–43, Fig. 17. After reviewing the relevant portions of Yamaura, we determine Petitioner has not demonstrated by a preponderance of the evidence that Yamaura transmits signals only in its narrow band during the BCH and FCH time slots for the reasons discussed below.” slip op. at 13

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner argues there are no signals other than calling signals sent during BCH and FCH because “the whole broadcast burst is part of the calling signal.” Tr. 102:17–103:2. However, upon review of the complete record and in the context of Yamaura’s entire disclosure, we credit Dr. Haas’s testimony that Yamaura’s repeated references to calling signals being specific control signals or part of the control signals indicates that Yamaura transmits other control signals during the BCH and FCH time slots. PO Resp. 30–31; Ex. 2001 ¶ 107.” slip op. at 15

  Patent outcomesUS 7,787,431 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,787,431
• Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.All claims unpatentable
  PTAB · Feb 7, 2017 · IPR2015-01658 · APJ William M Fink · IPR · Final written decision

  Claims 1–4, 7, 13, 14, 18–20, 22, and 26 are unpatentable on at least one ground; Sandell anticipation of claims 1–3 and Sandell-Hall obviousness of claim 7 were not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find these “definitions” to be substantially similar. For example, both require at least a mechanical engineering degree and experience varying between “some,” in Dr. Brown’s opinion, and “one to three years,” in Dr. Delson’s opinion. Given this apparent lack of disagreement, we adopt 7 U.S. Patent No. 782,156, issued Feb. 7, 1905 (Ex. 1009) (“Meeker”). 8 U.S. Patent No. 4,551,794, issued Nov. 5, 1985 (Ex. 1010) (“Sandell”). 9 U.S. Patent No. 1,842,167, issued Jan. 19, 1932 (Ex. 1011) (“Hall”). Dr. Delson’s statement of the level of ordinary skill for purposes of this Decision, but we note that our analysis would be the same under either formulation.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “1. “flame silhouette element” In the Decision to Institute, we construed the term “flame silhouette element,” recited in at least claims 1 and 26, as “a body of material having a shape that is suitable to generate a flame flickering effect.” Inst. Dec. 9. In their respective Response and Reply, neither party disputes the preliminary construction of this term. Accordingly, we see no reason to change our construction, which we based on the broadest reasonable interpretation, consistent with the Specification.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for petitioner

    “We determine that the Federal Circuit’s statement of the disclaimer of “non-chaotic pivoting” and devices “driven by rhythmic and metronomic patterns,” Luminara, 814 F.3d at 1353–54, is sufficiently specific to determine the scope of the term “pivot” in claim 1 and “pivotally supported” in claim 13.13 Accordingly, we apply the Federal Circuit’s construction that the plain and ordinary meaning of “pivot” and “pivotally supported” applies, 13 We have also considered Patent Owner’s Motion for Observations (Paper 37), which are substantially directed at obtaining admissions from Petitioner’s declarant in support of its proposed construction of chaotic pivoting (or that Schnuckle ’455 does not disclose chaotic pivoting based on this construction). See id. at 6–13. Although we have considered Patent Owner’s observations, we do not find them persuasive for the reasons explained herein. except that non-chaotic pivoting and devices driven by rhythmic and metronomic patterns are disclaimed.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “consider whether Schnuckle ’455 sufficiently discloses the pivot (or pivotally supported) limitation given the disclaimer of non-chaotic pivoting and devices driven by rhythmic and metronomic patterns. As noted above, the Federal Circuit specifically determined, at least as a preliminary matter, that Schnuckle ’455 seemed to meet this claim requirement with its discussion of a two-axis gimbal articulated by “chaotic forces” that can articulate the flame element to “randomly simulate blowing in the wind. ’455 patent, col. 6, ll. 53–62.” Luminara, 814 F.3d at 1354. We agree with the Federal Circuit’s preliminary determination. Although Patent Owner observes that “‘chaotic’ describes the ‘external or internal force’––i.e., the force entering the system, not the resulting motion” (PO Resp. 20–21), Patent Owner does not address the fact that this driving force is coupled to resulting motion “simulating blowing in the wind” (Ex. 1003, 6:62) and “provid[ing] a realistic flame effect” (id. at 1:54–58). As such, we agree that this excerpt of Schnuckle ’455 satisfies the chaotic pivoting requirement and is not driven by a “rhythmic or metronomic” driving force. Pet. Reply 4 n.1. Petitioner also cites the discussion of “programmable movement patterns” as additional evidence of this fact. Id. (citing Ex. 1003, 5:52–67 (“The desired movement pattern of the flame shaped surface 326 may be encoded and stored in the memory module 408 of the control board 302 in the form of digital data or control signals.”)). We agree that the column 5 description in Schnuckle ’455 of programmable movement patterns, when viewed against column 6’s description relied upon by the Federal Circuit (Ex. 1003, 6:53–62), suggests the programmed pattern is not rhythmic or metronomic but natural and chaotic.14 Accordingly, we find that Schnuckle ’455 discloses chaotic pivoting as required by claims 1 and 13. Accordingly, for the foregoing reasons, we determine Petitioner has satisfied its burden of proving anticipation based on Schnuckle ’455 against claims 1 and 13 by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 8,696,166 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,696,166
• Cisco Systems, Inc. / Quantum Corporation et al. v. Crossroads Systems, Inc.All claims unpatentable
  PTAB · Mar 17, 2016 · IPR2015-00854 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–53 are unpatentable as obvious: claims 1–14, 16–33, 35–50, and 53 over CRD-5500 Manual and HP Journal; claims 15, 34, 51, and 52 with Fibre Channel Standard.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownTerm construed petitioner constructionDecided for petitioner

    “The construction proposed by Patent Owner is overly narrow. Although Patent Owner emphasizes that the map must identify specific host devices, it does not explain persuasively why the claim language should be construed to exclude doing so via intermediate identifiers. See PO Resp. 5– 10. Patent Owner does not identify any disclosure in the ’041 patent’s specification that clearly disavows mapping to a device indirectly, or mapping to a device via an intermediate identifier that could identify a different host if the system were configured differently. See Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (holding that “words of manifest exclusion or explicit disclaimers in the specification are necessary to disavow claim scope” (internal quotations omitted)). Patent Owner’s discussion of Figure 3, for example, is insufficient to compel a narrow construction of the term because Patent Owner analyzes only a preferred embodiment of the invention. See PO Resp. 8–10; see, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (holding that limitations should not be imported from preferred embodiments into the claims absent a clear disclaimer of claim scope in the specification).” slip op. at 9

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

    “detailed analysis of why a person of ordinary skill in the art would have been motivated to combine the CRD Manual and the HP Journal6 in the manner asserted by Petitioners. Pet. 17–21 (citing Ex. 1003 ¶¶ 48–57). Specifically, Petitioners contend: (1) the CRD Manual explains that the disclosed CRD- 5500 controller has a modular design capable of accepting various I/O modules; (2) the HP Journal describes the benefits of FC technology over SCSI technology; (3) the HP Journal discloses the replacement of SCSI with FC, including the use of SCSI commands with FC frames. Id. For example, the HP Journal discusses various advantages of FC over SCSI as a transport medium technology, including advantages in bandwidth and addressability, and explains how some FC controllers are compatible with SCSI devices. Id.; see, e.g., Ex. 1006, 94–95, 99–101. Patent Owner does not dispute in its 6 These portions of the HP Journal relied on by Petitioners share a common author (Meryem Primmer), and similar subject matter (FC technology and its implementation), as well as the same apparent publication date in the same issue of the journal. Patent Owner did not dispute that one of ordinary skill would have combined the teachings of the different articles in the HP Journal. Based on the full record after trial, we agree and consider the articles collectively, as the parties have done throughout the proceeding. Patent Owner Response that a person of ordinary skill7 would have had reason to combine the teachings of these references. Based on the full record after trial, Petitioners have articulated a sufficient reason to combine the CRD Manual and the HP Journal with rational underpinnings supported by the evidence. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). We have reviewed the cited testimony (Ex. 2029, 103:18–24, 104:15– 105:1, 136:6–14), and find it insufficient to establish a long-felt need. The testimony is directed to whether the term “storage router” was used in the art in the late 1990s. See, e.g., id. at 104:24–105:1. It does not address what the needs or problems of the art were at that time. Thus, we do not find that the testimony supports sufficiently Patent Owner’s contention of long-felt need. The article cited by Patent Owner (Ex. 2038), which suggests that a problem might have existed in file system performance generally, also does not establish that there was long-felt need for the claimed invention. Patent Owner presented no evidence as to how long this problem had been recognized, the extent of the problem, whether it remained unresolved at the time of the invention, or whether the invention resolved this need. See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1332–33 (Fed. Cir. 2009). As such, we find that Patent Owner has not shown adequately that there was any long-felt need for the claimed invention. slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for petitioner

    “Evidence of commercial success “is only significant if there is a nexus between the claimed invention and the commercial success.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–12 (Fed. Cir. 2006). As a threshold matter, a sufficient nexus between Patent Owner’s commercial product and the features of its claimed invention has not been established. The evidence does not show sufficiently that the items listed in Exhibit 2044 embody the claimed invention, or that sales of the listed products resulted from novel, non-obvious features of the claimed invention rather than other features. See Ormco Corp., 463 F.3d at 1312–13 (evidence did not show that commercial success was due to claimed and novel features). Even if Patent Owner had established a nexus between its marketed technology and the invention claimed in the patent, its commercial success argument would not be persuasive. Patent Owner’s declarant’s statements that certain products include “mapping” or “access controls” (Ex. 2043 ¶¶ 5– 6) are insufficient to show commercial success of the claimed invention. An important component of the commercial success inquiry is determining market share associated with the alleged success, relative to all competing products. In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012). Even sales volume, if provided without market share information, is only weak evidence, if any, of commercial success. Id. at 1299. Here, the fact that Patent Owner sold a certain number of these devices and that they made up a certain share of its own sales is insufficient to establish commercial success without some context about the larger market. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).” slip op. at 34

  Patent outcomesUS 7,934,041 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,934,041

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.