• Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing granted
  PTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing

  The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9

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

    “E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,874,554
• Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing granted
  PTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing

  The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9

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

    “We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,874,554
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01270 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution of review of claims 2–5, 11–14, 22, 23, and 26–28 under § 325(d) because substantially the same prior art was previously presented and material Office error was not shown.

  RulingsInstitution decision

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

    “applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Because it was submitted in an IDS during prosecution of the ’380 patent, Sourcefire qualifies as art that was “previously presented” to the Office.” slip op. at 14

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

    “Bionics framework, and based on the particular circumstances here, we conclude that the same or substantially the same prior art as in the Petition was presented previously to the Office, and Petitioner has not demonstrated that the Office erred in a manner material to patentability of the challenged claims. Accordingly, we determine that discretionary denial of the Petition under 35 U.S.C. § 325(d) is appropriate. IV. CONCLUSION For the foregoing reasons, we exercise our discretion to deny institution under 35 U.S.C. § 325(d). V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18

  Discretionary denial
  Patents in suitUS 10,735,380
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01156 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution of IPR challenging claims 1, 6–10, 15–21, 24, 25, 29, and 30, because the same prior art was previously presented and no material Office error was shown.

  RulingsInstitution decision

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

    “presented to the Office. Section 325(d) states, in relevant part, “[in] determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses the following two-part framework in determining whether to exercise discretion under § 325(d) to deny institution: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 9

  Discretionary denial
  Patents in suitUS 10,735,380
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01154 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–27 because Petitioner did not show a reasonable likelihood that either asserted Jungck-based obviousness combination rendered the claims unpatentable.

  RulingsInstitution decision

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

    “c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that the combination of Jungck and Wood meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 24

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

    “We agree with Patent Owner that the Petition’s avoidance of the operation of edge caches when edge caches are important in the processing of traffic flowing across the boundary undermines this ground of the Petition. If Petitioner wished to rely on an embodiment or configuration in which the edge caches were irrelevant, the edge caches were redundant to the edge server, or the edge caches were unnecessary, it was incumbent upon Petitioner to explain sufficiently how and why that was the case. Petitioner was aware of the edge caches because it appears to have omitted all references to them in the Petition yet did not explain why this was done. Additionally, although Petitioner’s declarant does include references to edge caches, its declarant also does not explain sufficiently the relevance of those edge caches. Ex. 1004 ¶¶ 148, 212, 214, 215, 227, 323. Additionally, Petitioner’s references to collateral estoppel do not relieve Petitioner from the burden to describe its contentions regarding obviousness in the Petition.” slip op. at 15

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Our reviewing court has held that “[c]ollateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351–1352 (Fed. Cir. 2018) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (citations omitted); Webpower, Inc. v. WAG ACQUISITION, LLC, Case IPR2016- 01239, Paper 21 at 26–28 (PTAB Dec. 26, 2017). “Issue preclusion [i.e., collateral estoppel] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). Patent Owner points out that the claims at issue in IPR2018-01443, 1444, 1513 (“prior IPRs”) did not include the “entire boundary” or “all traffic” limitations. Prelim. Resp. 26–27, 32, 44. We agree. Collateral estoppel does not apply because there are differences between the claim limitation at issue here and the adjudicated claim limitations at issue in the prior IPRs. See In re Freeman, 30 F.3d at 1465; accord MaxLinear, Inc., 880 F.3d at 1377–1378; cf. In re Arunachalam, 709 F. App’x 699, 702 (Fed. Cir. 2017) (unpublished) (finding collateral estoppel applies to an adjudicated claim that is not “materially different” than the adjudicated claims).” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner requests that the preamble of independent claims 1, 8, and 15 be treated as limiting. Prelim. Resp. 16–17. These preambles provide antecedent basis for “packet security gateway,” “boundary,” “network,” and “one or more other networks.” Id. at 16 (citing Ex. 1001, 20:64–21:2, 22:13–18, 23:35–42). The preambles also recite the “plurality of packet security gateways that collectively provide an entire interface across a boundary of a [protected] network,” which is “essential to understand” the “all traffic” limitation in the body of these claims and thus ‘“give life, meaning, and vitality”’ to the claims. Id. (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted)). The preambles provide the context for the body of the independent claims by defining the arrangement of the “plurality of packet security gateways” relative to the “boundary” of the protected network and thus the basis for applying “packet filtering rules . . . to all network traffic traversing the boundary.” Id. (citing Ex. 1001, 20:64–21:8). The “entire interface” limitation also was relied on during prosecution of the parent ’437 Patent’s claims to distinguish them from the prior art. Id. at 16–17 (citing Ex. 2008, 254–61; Catalina, 289 F.3d at 808–09). Petitioner does not dispute the preambles are limiting. Pet. 18–21, 37. For, the reasons above, we construe the preambles of independent claims 1, 8, and 15 as limiting. After review of the current record, we conclude that, other than determining the preambles are limiting, no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,785,266
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01153 · APJ Bryan F Moore · IPR · Institution

  Institution denied because Petitioner did not show a reasonable likelihood of establishing claims 1–20 unpatentable as obvious over Jungck, alone or with RFC2003.

  RulingsInstitution decision

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

    “c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22

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

    “c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that Jungck meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 22

  • BurdenDecided for patent owner

    “Whether or not this was known as a general proposition does not address reasons why Jungck’s traffic appears to bypass the edge servers upon which Petitioner relies and why a person of ordinary skill would have modified Jungck’s operation to apply its rules to all traffic or why a person of ordinary skill would have modified Jungck’s operation to use device 900 instead of the edge servers and what effect that would have on the rest of the operation of Jungck. Petitioner also appears to rely on its declarant who testifies it was well-known to block all incoming traffic. Fintiv Reply 9 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 72–73). Nevertheless, this section of the Declaration was not cited in the Petition but rather is referred to indirectly in a portion of the Declaration which is cited in the Petition. Pet. 44 (citing Ex. 1004 ¶ 241). Paragraph 211 of the Declaration states “[a]s also discussed in Section IV, the use of block lists (e.g., blacklists) to perform packet filtering, including both ingress and egress filtering, was well-known,” but does not refer to paragraphs 72 and 73. Ex. 1004 ¶ 211 (emphasis added). As the Court of Appeals for the Seventh Circuit has explained, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999); see also United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Additionally, paragraph 72 of the Declaration contains new argument regarding “firewall” and “standard networking practice” based on references (Bharali and Wood) not cited for that proposition in the Petition. Ex. 1004 ¶ 72. We find the Petition improperly incorporates this section of the Declaration by reference because the basis of the “firewall” argument is not explained sufficiently in the Petition. Cisco Systems, Inc., v. C-Cation Technologies, LLC, IPR2014-00454, Paper 12 at 8 (PTAB Aug. 29, 2014) (informative opinion) (describing the proper course of action as “to not consider arguments that are not made in the Petition, but are instead incorporated by reference”).” slip op. at 16

  • Skill levelSkill level petitioner adoptedOther

    “other, Petitioner states that a person of ordinary skill in the relevant art on October 22, 2012 (the filing date of the application that matured in the ’437 patent), would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of professional experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attack. Pet. 16–17 (citing Ex. 1004 [Declaration of Dr. Vijay Madisetti] ¶¶ 34–36). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 6

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,567,437
• Cisco Systems, Inc. v. Securityprofiling, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01242 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 19 and 20 were obvious over Willebeek-LeMair.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . 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) › Motivation to combine / reasonable expectation of successNot reached

    “However, unaddressed is the claim’s requirement that each of the two of the plurality of mitigation techniques be automatically applied “to the at least one device.” Throughout the discussion of the limitations of claim 14, and again with respect to remaining challenged claim 19, Petitioner only describes the mitigation techniques to be taught by the application of signatures to the intrusion detector functionality and the firewalling defense system. However, Petitioner also asserts that the “plurality of devices” of the claim are the devices within the network being protected. See Pet. 26 (in arguing that Willebeek-LeMair teaches “code for: receiving information in connection with at least one of a plurality of devices,” (14.4) citing network discovery functionality to discover vulnerabilities in a scan of “machines” in protected network 14). Thus, Petitioner fails to show how Willebeek-LeMair teaches or suggests “automatically applying at least two of the plurality of mitigation techniques . . . to the at least one device,” that is, to a device in network 14.” slip op. at 20

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

    “Neither Petitioner nor Patent Owner explicitly requests claim construction. Pet. 10–11; see Prelim. Resp. Patent Owner’s Preliminary Response raises certain implicit claim construction issues. Additionally, we acknowledge that, in a related litigation, a district court has issued a Markman order construing certain claims of the ’431 patent. Ex. 1016. However, in this instance, no resolution of claim construction issues is necessary to resolve the controversy, and thus, we do not construe any claim terms. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 11

  • Adverse judgmentOther

    “requesting inter partes review of claims 1, 2, 4–12, and 14–20 of U.S. Patent No. 9,100,431 B2. Ex. 1001 (“the ’431 patent”). After the Petition was filed, SecurityProfiling, LLC (“Patent Owner”) filed a Statutory Disclaimer of claims 1, 2, 4–12, and 14–18. See Ex. 2002. Thus, claims 19 and 20 for our consideration.1 Patent Owner also filed a Preliminary Response opposing institution of review as to the remaining challenged claims 19 and 20. Paper 6 (“Prelim. Resp.”).” slip op. at 1

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,100,431
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 20, 2022 · IPR2021-01155 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution of IPR challenging claims 1–20 under § 325(d), finding the asserted art and arguments were previously presented and Petitioner failed to show material Office error.

  RulingsInstitution decision

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

    “Examiner during prosecution of the ’343 patent and that Mantripragada is cumulative to Buck, which was considered during prosecution of the ’343 patent. We further find that Patent Owner’s argument during prosecution that the packet transformation function is configured “to prevent an exfiltration operation” resulted in allowance of the claims of the ’343 patent, which overlaps with the argument that Patent Owner makes in this case against Petitioner’s challenges. Prelim. Resp. 35–36. Petitioner has not shown that the two-stage filtering process was a basis for the Examiner’s allowance of the claims of the ’343 patent over the cited prior art. We, therefore, find that the same or substantially the same prior art, and the same or substantially the same arguments, previously were presented to the Office under the first part of the Advanced Bionics framework.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Petitioner’s declarant testifies regarding the prosecution history of the ’343 patent. Ex. 1003 ¶¶ 85–90. He concludes that “the ’343 Patent claims were apparently allowed because the Examiner concluded that the prior art of record failed to disclose a two-stage packet filtering process,” mirroring Petitioner’s argument. Id. ¶ 90. Petitioner’s declarant does not indicate how the facts support this conclusion. As mentioned, Patent Owner’s argument during prosecution leading to allowance was that the ’343 patent’s claims recite applying the packet transformation function configured to prevent an exfiltration operation. Ex. 1002, 1614–1615, 1639. Petitioner’s declarant does not explain sufficiently where in the prosecution history Patent Owner argued that a two-stage packet filtering process distinguished the ’343 patent’s claims over the prior art, or where the Examiner allowed the claims because of two-stage packet filtering. Accordingly, lacking evidentiary support, the declarant’s testimony is entitled to little or no weight on this point. 37 C.F.R. § 42.65(a). Thus, we see no additional evidence or facts in the Petition that warrant reconsideration of the prior art. Therefore, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of the challenged claims under the second part of the Advanced Bionics framework.” slip op. at 18

  Discretionary denial
  Patents in suitUS 10,567,343
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01041 · APJ Debra K Stephens · IPR · Final written decision

  DISH failed to prove claim 13 unpatentable as obvious over either Durand and Bennett or Goyal and Bennett.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima 261 F.3d 1355). Based on the present record, including the disclosure in the ’456 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine Petitioner’s asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’456 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)). As we determine the four instances of “at least” in Petitioner’s formulation introduce ambiguity, we remove these terms from our definition. Accordingly, we determine an ordinarily skilled artisan would have a Bachelor of Science in one of Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing resource reservations for UNIX-based computing systems, or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing resource reservations for UNIX-based computing systems.” slip op. at 7

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

    “We determine that it is not necessary to provide an express interpretation of any terms of claim 13 (Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review)).” slip op. at 9

  • BurdenNot shown unpatentable

    “However, Petitioner has not set forth with specificity where Bennett teaches the request uses the one or more object references. Indeed, Petitioner has not explained how these two teachings of Bennett disclose the recited limitations with sufficient specificity or how one of ordinary skill in the art would modify Durand with these teachings of Bennett to achieve the recited limitations. Accordingly, Petitioner has not established that the combination of Durand and Bennet teaches the subject matter of claim 13. Therefore, based on the entire trial record, we determine Petitioner has not established by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Durand and Bennet under 35 U.S.C. § 103.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its Reply, as noted by Patent Owner (PO Sur-reply 11), Petitioner offers a new theory, pointing to a different system call of Goyal (Pet. Reply 19–20 (citing Ex. 1090 ¶ 144 (citing Ex. 1002 ¶ 352–354))). Petitioner contends this new argument is to address Patent Owner’s alleged contention that “‘quality of service’ must already be ‘provided’ at the same time when the correspondence to the ‘reference to an object’ is created (Pet. Reply 19 (citing Ex. 1090 ¶ 141)). Thus, in Dr. Negus’ Reply Declaration, Dr. Negus asserts Goyal teaches the recited “quality of service guarantees that correspond to a reference to an object” relying on the “int hsfq_move (int from, int to, .....)” which “is used to move a thread from one leaf node to another”1 (Ex. 1090 ¶ 144). Petitioner’s alleged reliance on the hsfq_move (int from, int to, …….) system call instead of the int hsfq_mknod (char *name, int parent, int weight, int flag, scheduler_id side) system call represents a change in Petitioner’s unpatentability contentions that is presented for the first time in Petitioner’s Reply (see Pet. Reply 19–20). We acknowledge that the Petition mentions a “move” function: “Additionally, system calls are used to remove, move, and administer nodes in the scheduling structure. Goyal also discloses several additional functions to manage the scheduling structure, including removing, moving, and administering nodes.” (Pet. 61 (citing Ex. 1002 ¶¶ 350–352 (citing Ex. 1007 § 4))). But the cited portion of Dr. Negus’ Declaration simply states that there are other system calls, including “int hsfq_parse(char *name, int hint),” “int hsfq_rmnod(int id, int 1 We note Dr. Negus refers to the system call as “int hsfq_move” (see e.g., Ex. 1002 ¶¶ 144, 352) although Goyal discloses the system call as “hsfq_move” (Ex. 1007 § 4). We consider Dr. Negus’ naming to refer to the same system call as disclosed in Goyal. mode),” and “int hsfq_admin(int node, int cmd, void *args)” and the system call “‘int hsfq_move(int from, int to, .....)’ which ‘is used to move a thread from one leaf node to another’” (Ex. 1002 ¶ 352; see also id. ¶ 144 (repeating the same information as paragraph 352)). Additionally, these teachings of Goyal are discussed in conjunction with the limitation “utilizing an application programming interface . . . to establish one or more quality of service guarantees” (id. ¶¶ 356, 359). Thus, Dr. Negus’ initial Declaration does not elaborate on the move function, and the Petition does not rely on the “hsfq_move” system call to teach the limitations of claim 13. Petitioner asserts that this argument in reply is to address “Patent Owner’s new claim construction position” (Pet. Reply 19). We disagree. As outlined above, the Petition does not identify where an object reference is “used in the request,” as specifically recited in claim 13. Petitioner’s new reply argument, therefore, attempts to fill in a gap in Petitioner’s unpatentability contentions from the Petition that was pointed out by Patent Owner. Under the circumstances here, we do not consider this a permissible reply argument (see Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”)). Thus, we do not consider Petitioner’s newly presented contentions.” slip op. at 26

  Patent outcomesUS 6,725,456 not shown unpatentable
  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,725,456
• Configit A/S v. Versata Development Group, Inc.Instituted
  PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR of claims 1–5 and 9–19 on five § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2

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

    “For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15

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

    “configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “a Bachelor’s degree in Computer Science, Computer or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,836,766

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.