• Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution denied
  PTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized when “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); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7

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

    “of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13

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

    “This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,181,743
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Oct 11, 2024 · IPR2024-00678 · APJ John A Hudalla · IPR · Institution

  Institution was denied for claims 1, 2, 5, and 6 because Petitioner did not show a reasonable likelihood that either Krantz alone or Krantz and Herrmann rendered them obvious.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

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

    “We are persuaded by Patent Owner’s arguments. As noted by Patent Owner (Prelim. Resp. 27), claim 1 separately recites (1) “an authentication module” that seeks access based on “authentication information” and (2) a “gatekeeper” that “formulate[s] an audit request” and evaluates whether to approve access based on a response to the audit request. The fact that authentication can be a part of a security policy audit (see Pet. 38 (citing Ex. 1301, 11:67–12:6)) does not change the fact that claim 1 recites separate sets of limitations for authentication and auditing that Petitioner must account for in its unpatentability contentions.” slip op. at 13

  • Skill levelSkill level petitioner adoptedOther

    “remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Patent Owner does not cite any evidence supporting its assessment of the level of ordinary skill. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’645 patent and the asserted prior art.” slip op. at 9

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

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’645 patent],” so we “need not expressly construe the claim terms.” Pet. 8. Patent Owner also argues that we should apply the plain and ordinary meaning of all claim terms. Prelim. Resp. 6. Nonetheless, Patent Owner argues that Petitioner deviates from the plain and ordinary meaning of certain limitations. Id. at 6– 7. Thus, Patent Owner puts forth its understanding of the plain and ordinary meaning for the following recitations: “configure an access point in response to approval of the device by the gatekeeper” and “device information received from the device in response to the audit request.” Id. at 7–13. Based on the present record, we need not expressly construe any claim terms in order to render the instant Decision. See, e.g., 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 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,117,645
• Cisco Systems, Inc. / Fortinet, Inc. v. Infoexpress Inc.Institution denied
  PTAB · Sep 24, 2024 · IPR2024-00540 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4–10, 13, 16, 18, and 19 were obvious over Krantz alone or Krantz and Herrmann.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1–2. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. at 2. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’350 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Petitioner argues that “a [person of ordinary skill in the art] would find the challenged claims unpatentable under any interpretation consistent with their plain and ordinary meaning in the context of the [’350 patent],” so we “need not expressly construe the claim terms.” Pet. 7. Patent Owner argues to the contrary that we should construe the phrase “reconfiguring the communication port” as “to change the access point itself [rather than something else] in a way that the checked device is able to access the less-restricted portion of the protected network.” Prelim. Resp. 7–9. Patent Owner also argues that we should construe the phrases “audit data pertaining to a device” and “auditing the device in accordance with a security policy” as “requir[ing] that the ‘audit data’ and ‘auditing’ . . . be expressly about the device” rather that “the user.” Id. at 9–12. As discussed below, we are able to determine whether to institute review without resolving the construction of any claim terms. Accordingly, we need not and do not construe any terms expressly. 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 9

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

    “We agree with Patent Owner. The ’350 patent distinguishes between user authentication using a username and password and application of a security policy. Ex. 1101, 1:35–39 (“A first level of access control is achieved by requiring authentication of a user. This may be accomplished by requiring the user to enter a username and a password.”), 1:45–48 (“Reliance on mere user authentication includes several disadvantages. For example, there are no provisions to assure that an access device used by the authenticated user meets network security policies.”). Although the ’350 patent describes both user authentication and application of a security policy as being carried out by a gatekeeper, this is accomplished in separate process steps. Id. at 10:38–41 (“GateKeeper 225 authenticates a user, obtains audit data, and applies a security policy in an Authenticate User Step 440, an Obtain Audit Data Step 450 and an Apply Security Policy Step 460, respectively.”). Thus, we are not persuaded that, as Petitioner argues, user authentication in the ’350 patent constitutes the application of a security policy.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,347,350
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11

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

    “Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Trend Micro, Inc. v. Open Text Inc.Institution denied
  PTAB · Oct 11, 2023 · IPR2023-00655 · APJ Scott Raevsky · IPR · Institution

  Institution was denied because Trend Micro did not show a reasonable likelihood that claims 1–30 were unpatentable, principally due to insufficient motivation to combine the asserted references.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’250 patent. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person having ordinary skill in the art (PHOSITA [or POSITA]) at the time of the earliest claimed priority date for the ’250 patent would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or network forensics. More education can supplement practical experience and vice versa. Pet. 26 (citing Ex. 1002 § 81). Patent Owner provides a slightly different definition of the level of skill. Prelim. Resp. 25 (citing Ex. 2001 ¶¶ 52–56). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’250 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this decision.” slip op. at 8

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

    “In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2022). The parties do not propose any claim constructions. See Pet. 9–10; Prelim. Resp. 28–29. We determine that no terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 9

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

    “The Supreme Court instructs us that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Petition contains insufficient articulated reasoning with rational underpinning.” slip op. at 11

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,418,250
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Aug 2, 2023 · IPR2023-00491 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 8, 9, 14, or 15 were unpatentable over Liu, Tuvell, and Kester.

  RulingsInstitution decision

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

    “For these reasons, we determine that Petitioner does not make a sufficient showing that its proposed combination of Liu, Tuvell, and Kester meets the limitations of independent claim 1 that include a “central server.” We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Liu, Tuvell, and Kester.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner

    “There are a number of difficulties with Petitioner’s position, which appears to be conceived with the aid of hindsight to reconstruct the claimed invention. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.”). First, Petitioner considers each of the mirrored servers in its conception of Liu also to correspond to the claim’s recited “threat servers.” Pet. 50. As Dr. Orso testifies, “Liu’s mirror servers are effectively identical to each other” and “even if Liu’s mirror servers could be interpreted as teaching the claimed threat servers . . . [,] there is no ‘central server’ in Liu’s peer-to-peer network of mirrored servers.” Ex. 2001 ¶ 70.” slip op. at 22

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “H. Discretion Under 35 U.S.C. § 314(a) As noted above, the ’721 patent is the subject of parallel proceedings in the form of the related litigation. Supra, § I.E. Patent Owner asks that we exercise our discretion to deny the Petition based on the state of the related litigation. Prelim. Resp. 4–21. Because we deny the Petition on the merits, we do not reach this issue.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent discipline, and at least two years’ worth of experience developing computer networking or network architecture, or a Master’s degree in a related field.” Pet. 9. Petitioner adds that, alternatively, a person of ordinary skill in the art “could have four or more years of work experience in computer networking and in the development of client-server systems.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Newman. Ex. 1003 ¶ 17. Patent Owner’s statement of the level of ordinary skill is generally similar, and supported with testimony by Dr. Orso, who characterizes the parties’ respective positions as having “minor variations.” Prelim. Resp. 27; Ex. 2001 ¶¶ 39–42. According to Patent Owner, a person of ordinary skill in the art “would have had a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have 2-3 years of practical work experience in the general fields of electrical engineering, computer science, networking communications, and/or device and network security.” Prelim. Resp. 27. Patent Owner adds that “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Id. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion not to institute inter partes review if we were to adopt Patent Owner’s proposal. See Prelim. Resp. 27 (Patent Owner stating that “[a]lthough Patent Owner’s [person of ordinary skill in the art] definition differs slightly from Petitioner’s, Patent Owner’s positions and arguments do not change based on which [person of ordinary skill in the art] definition the Board applies”); Ex. 2001 ¶ 42 (Dr. Orso testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions.”).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,413,721
• Volkswagen Group Of America, Inc. v. Yechezkal Evan SperoInstitution denied
  PTAB · Jul 11, 2023 · IPR2023-00336 · APJ Jason W Melvin · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 7, 8, or 10–18 were unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

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

    “An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim, and we do not institute inter partes review.” slip op. at 2

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

    “We agree with Patent Owner. Petitioner’s contentions do not address the requirement to “sense a presence of glare on a person’s eyes” and instead rely on Braun’s disclosures that its controller “identifies oncoming vehicles.” Ex. 1005, 6:4–7, 12:17–20. Those disclosures do not satisfy the claim language, which requires sensing glare, not vehicles. The ’551 patent’s specification is consistent with the claim language, in that it discusses using a camera vision system to detect glare “by assessing the amount of light reflected back to the camera from the eyes of room occupants and determining . . . whether or not glare is occurring.” Ex. 1001, 64:31–40. And the specification distinguishes Braun’s approach of setting “light source intensity shining in the direction of the eyes to a level that will not cause glare.” Id. at 64:40–42. That alternative approach is not within the scope of claim 7. Thus, we agree that the Petition does not show Braun discloses claim 7’s glare sensing. Accordingly, we conclude Petitioner has not shown a reasonable likelihood of prevailing with respect to obviousness over Braun and Dowling.” slip op. at 8

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

    “We agree with Patent Owner. While neither party construes claim 8’s language “movable structure for aiming the directional light sources mounted thereon in a defined direction,” the Petition does not adequately address the limitation. The ’551 patent describes movable aiming in several ways, including that light sources may be manually or automatically repositioned, and that aiming may be adjusted once, when the light is installed, or as needed when lighting requirements change. See, e.g., Ex. 1001, 14:22–45, 61:41–43, 66:38–41, 68:21– 32, 69:36–41, 70:49–53, 85:64–67, 89:41–45, 92:25–56. For purposes of this decision, we note that the specification’s examples all relate to pointing the light source in a desired direction. Pederson, in contrast, does not teach that its gyrator points its light source in a desired direction. Instead it oscillates or rotates to create a warning signal. See Ex. 1011 ¶¶ 37, 183–185. Petitioner has not identified how skilled artisans would have adapted Pederson’s structure to aim Begemann’s light sources, rather than oscillating or rotating them. Stated otherwise, the claims require positioning the light sources, while Pederson teaches creating motion in its light sources. Without doubt, positioning requires motion, but it requires motion controlled in a way that Pederson does not teach. Petitioner does not explain how skilled artisans would have applied Pederson’s teachings to Begemann’s light sources in a way that would allow the light sources to be aimed in a particular direction, as required by claim 8. Because all of the claims challenged in this ground depend from claim 8, directly or indirectly, we conclude Petitioner has not shown a reasonable likelihood it would prevail with respect to obviousness over Begemann, Lee, and Pederson.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Petitioner notes that the specification states that a light source “means any system that is capable of receiving an electrical signal and producing light in response to the signal.” Pet. 11 (quoting Ex. 1001, 17:3–6). The specification also instructs that “a ‘light source’ may refer to a single light emitting diode package including multiple semiconductor LED dies that are individually controlled.” Ex. 1001, 17:13–16. It explains further that “[t]ypically, an LED will come packaged in an optical assembly consisting of a reflector and lens with 8° to 50° spreads being typical” and that “[a] Surface Mount Device—SMD LED with no optics will still be limited to 180° due to its construction.” Id. at 17:59–63. Thus, “light source” as used in the ’551 patent may include optics so long as the optics are packaged with the device that converts an electrical signal to light. Beyond the “light source” discussed, we agree with the parties and therefore do not further construe the claims for this decision. 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

  Claim construction§ 103 obviousness
  Patents in suitUS 9,955,551
• Apple Inc. v. R.N Nehushtan Trust Ltd.Institution denied
  PTAB · Jun 14, 2023 · IPR2023-00230 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Apple did not show a reasonable likelihood that any challenged claim was unpatentable over Shahbazi or Fam, Geiger, and Shirai.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner does not identify a level of skill for a person of ordinary skill in the art. See generally Pet. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had at least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least one year of experience in wireless communication systems. Superior education could compensate for a deficiency in work experience, and vice-versa. Ex. 1003 ¶ 20. Patent Owner accepts this level of skill at this stage. Prelim. Resp. 6.” slip op. at 6

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

    “Petitioner asserts that no terms require express construction. Pet. 5–6. Patent Owner does not propose any claim constructions, but argues that Petitioner’s arguments assume various claim constructions. PO Resp. 7–8. We determine that no terms need to be construed at this time. 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

  • BurdenNot shown unpatentable

    “In order for Shahbazi to be entitled to the filing date of the Shahbazi Provisional, Petitioner is required to show written description support in the Shahbazi Provisional for the invention disclosed in Shahbazi. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981); see also Dynamic Drinkware, 2 Shahbazi was filed on December 22, 2004. Ex. 1004, code (22). 3 The ’544 patent claims priority to a provisional application filed March 8, 2004 and is a continuation in a line of other continuations, where the earliest application was filed May 6, 2004. Ex. 1001, codes (60), (63). Thus, based on the chain of priority, Shahbazi itself is not prior art to the ’544 patent unless Shahbazi is entitled to the benefit of its provisional. Whether or not the ’544 patent is entitled to its claim of priority to its provisional does not impact this analysis. (2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with [35 U.S.C.] § 112, ¶ 1.”).4 In addition, Shahbazi only receives the benefit of the earlier priority date of the Shahbazi Provisional for that which is disclosed in the Shahbazi Provisional. See 35 U.S.C. § 119(e) (An application for patent is entitled to the filing date of a provisional application for the invention disclosed in the provisional application); see also Prelim. Resp. 11–12. In other words, Petitioner also needs to show that the portions of Shahbazi relied on as teaching aspects of the ’544 patent claims find support in the Shahbazi Provisional.” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,635,544
• Google LLC v. Defenders Of The American Dream, LLCInstitution denied
  PTAB · May 18, 2022 · IPR2022-00112 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–17 were obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Because Petitioner has not sufficiently shown that Silva discloses “an image recognition task [that] comprises an instruction to select one image corresponding to the selected image category from the matrix of non-overlapping randomly selected images,” we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that claims 1–17 would have been obvious in view of Silva, either alone or in combination with Osborn or Osborn and Pinkas.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science or a related field with coursework relating to computer science, plus two years’ academic and/or industry experience in computer security and/or artificial intelligence” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 34–39). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’578 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 19

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

    “Claim Construction Petitioner asserts that it interprets the claims “using the standard used in civil actions under 35 U.S.C. § 282(b), in accordance with the ordinary and customary meaning as understood by a POSA and the patent’s prosecution history,” but does not identify any constructions. Pet. 6. Patent Owner does not address claim construction in the Preliminary Response. Under these circumstances, we find that we need not engage in formal claim construction, although we do address some claim language in the course of the obviousness analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). D.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Moreover, the prosecution history removes any doubt about whether these claims are limited to an instruction to select only one image. As explained above, the applicant changed “an instruction to select an image” to “an instruction to select one image” in response to a rejection in which the Examiner was relying on the Pratte reference for the instruction. See Ex. 1002, 404, 427. The applicant then argued that Pratte failed to teach the “image recognition task” because “Pratte does not instruct a user to select ‘one image,’ but instead ‘instructs a user to select all images that are associated with animals.’” Id. at 435. We conclude that the amendment and associated argument evidence a clear and unmistakable narrowing of the claims to systems with instructions to select one image corresponding to the category, and excluding systems, like Pratte, in which the user is instructed to select all images associated with a category. See Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (explaining that “for a statement during prosecution to qualify as a disavowal of claim scope, it must be ‘so clear as to show reasonable clarity and deliberateness’ and ‘so unmistakable as to be unambiguous evidence of disclaimer’”) (quoting Omega Engr., Inc, v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)); see, e.g., SpeedTrack, Inc. v. Amazon.com, 998 F.3d 1373, 1379 (Fed. Cir. 2021) (limiting claims where “the applicants argued that [the prior art] had a ‘hierarchical’ relationship between fields and values that fell outside the scope of the amended claims”). The disclaimer arises even though the applicant made other arguments in the same response. See SpeedTrack, 998 F.3d at 1380. Silva, like Pratte, instructs the user to select all images that fall into a category––see Ex. 1005, 1325 (“The user is then asked to identify, from each column available in the test, which image relates to the label.”)––and thus does not meet the claim language requiring an instruction to select “one” image. Notably, this problem cannot be cured by mapping the claimed “matrix” to a single column of Silva, because the claims also require that the “matrix” comprise at least one of each of the three categories of images, and Silva has three columns that are a mix of images known to be in the category and known to not be in the category, and a fourth column that consists of entirely unknown images. See Ex. 1005, 1325 (“One special column will contain all those images whose relation to the current label we want to verify, while all the others contain the remaining images whose relation to the label the system is confident about, i.e. they certainly do or do not relate to the label.”).” slip op. at 25

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,621,578
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Mar 24, 2022 · IPR2021-01521 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 1, 9–11, 19–21, and 29–30 were obvious over Paxton and Sutton.

  RulingsInstitution decision

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

    “unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 16–56. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 13

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

    “or why its proposed Paxton-Sutton combination would generate rules and provision the rules ‘responsive to correlating,’ as required by the Challenged Claims.” Prelim. Resp. 43. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the correlating, one or more rules configured to identify packets received from the host located in the first network.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent”” slip op. at 8

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

    “Claim Construction The parties do not dispute any claim constructions (see Pet. 14–15; Prelim. Resp. 41), we find no terms that need to be construed to resolve any issues, and, accordingly, we do not construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 9

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,560,176

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.