• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

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

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

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

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Google LLC v. Security First Innovations, LLCSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17

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

    “Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21

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

    “Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25

  Patent outcomesUS 11,178,116 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 11,178,116
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1, 2, and 4–20 are unpatentable over Thomas; claim 3 is not shown unpatentable. Substitute claims 22–36 are unpatentable, and substitute claim 21 is not reached.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “g) Conclusion—Claim 1 Based on the arguments and evidence of record, we determine that” slip op. at 28

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

    “with the computer program 110.” Ex. 1005, 3:54–55. Thomas describes that (1) the “collected data is then stored in the database 130,” (2) the collected “data is stored in a data structure, generally referred to as a user’s profile,” and (3) the collected “data is logically linked to an event, or situation, that initiated the user’s input.” Id. at 3:56–61. Thomas describes creating or establishing a user profile by simulator 120 recording “the user’s decision/input” and storing “the user’s input in the field or sub-profile associated with the particular situation and/or event.” Id. at 4:67–5:5, Fig. 6. Patent Owner does not dispute Petitioner’s showing for element [1.3]. Also, contrary to Patent Owner’s arguments, we must consider what Thomas discloses rather than whether Thomas uses the exact claim term “instruction sets.” Cf. Gleave, 560 F.3d at 1334 (a reference does not have to satisfy an ipsis verbis test to disclose a claimed element). For these reasons, we are not persuaded by Patent Owner’s argument that Thomas does not “mention instruction sets” or “anything related to an instruction set.” PO Resp. 36–37; PO Sur-reply 17.” slip op. at 42

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “C. Indefiniteness Petitioner argues that proposed substitute claims 22–36 are indefinite.” slip op. at 72

  Patent outcomesUS 10,607,134 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,607,134
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Jan 3, 2025 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–9, 11–14, 16–24, 26, 28, 29, and 31–34 are unpatentable as anticipated by Grotmol; claim 15 was not shown unpatentable because Grotmol does not disclose its required sequence.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “(1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning.” Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner “adopts” Petitioner’s description of the level of ordinary skill in the art. PO Resp. 4–5. We also adopt Petitioner’s description for the purposes of this Decision.” slip op. at 5

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

    “The parties appear to agree that the term “connection” refers to a relationship, but dispute whether it includes a link. PO Resp. 7; Pet. Reply 23. We need not resolve this claim construction issue in order to resolve the parties’ disputes about the asserted ground of unpatentability. Specifically, as discussed below, even if we assume for the purposes of this Decision that the term “connection” means a “relationship that includes a link,” the asserted prior art still discloses the disputed claim limitation. See Section II.D.23.” slip op. at 6

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

    “We agree with Patent Owner that claim 15 requires modifying the first instruction set before determining the modified first instruction set based on an at least partial match between the new digital picture and the first digital picture. Claim 15 recites “modifying: the first one or more instruction sets” and “determining the modified the first one or more instruction sets . . . based on the at least partial match between the new one or more digital pictures and the first one or more digital pictures.” Ex. 1001, 162:65–163:15 (emphasis added). The phrase “the modified . . . instruction sets” in the determining limitation indicates an order because it refers back to the instruction sets modified in the modifying limitation. Id. Further, the phrase “based on the at least partial match” indicates that a partial match between the new picture and the first picture returns the modified first instruction set. Id. In order for a partial match to return the modified first instruction set, it is logical that the first instruction set previously was modified and correlated to the first picture. Id. Thus, claim 15 indicates that the modifying limitation is performed before the determining limitation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003) (“First, we look to the claim language to determine if, as a matter of logic or grammar, [the recited steps] must be performed in the order written.”).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “3. Means-plus-function limitations Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4 (citing Ex. 1001, 16:8–60). Patent Owner does not dispute Petitioner’s proposed construction. PO Resp. 11. We adopt Petitioner’s proposed construction for purposes of this Decision. D. Anticipation of Claims 1–9, 11–24, 26, 28, 29, and 31–34 by Grotmol Petitioner argues that claims 1–9, 11–24, 26, 28, 29, and 31–34 are” slip op. at 10

  Patent outcomesUS 11,055,583 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 11,055,583
• Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentable
  PTAB · Dec 12, 2024 · IPR2023-01054 · APJ Russell E Cass · IPR · Final written decision

  Claims 4 and 11 are unpatentable over Grotmol and Hickman; claims 5 and 7 are not shown unpatentable. Substitute claims 21 and 24–26 are unpatentable; claims 22 and 23 are not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art, 3 Patent Owner does not present objective evidence of nonobviousness in this proceeding. would have [had] at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 4 (citing Ex. 1002 ¶¶ 40–42). Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 6. Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, except as noted above, we adopt Petitioner’s assessment” slip op. at 11

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

    “1. “connection” Claim 7 recites, in pertinent part, that “a first connection is generated” slip op. at 14

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

    “c) Conclusion—Claim 7 After consideration of the contentions and the evidence of record, we” slip op. at 52

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “7 We recognize that our conclusion here differs from the preliminary determination made in our Preliminary Guidance. After considering the full trial record, including Patent Owner’s MTA Reply, Petitioner’s MTA Sur-reply, Patent Owner’s Sur-sur-reply, and the arguments made at the oral hearing, we find that Petitioner has satisfied its burden of showing that this claim limitation would have been obvious over the Grotmol-Hickman combination. When issuing our Preliminary Guidance, we emphasized that the views expressed therein were “preliminary,” “subject to change upon consideration of the complete record,” and “not binding on the Board when reaching a final written decision.” See Prelim. Guid. 3.” slip op. at 99

  Patent outcomesUS 10,452,974 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,452,974
• Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentable
  PTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand

  On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.

  RulingsRemand decision

  • RemandOther

    “with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Google LLC v. Nobots LLCSome claims unpatentable
  PTAB · Nov 29, 2023 · IPR2022-00940 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–17 and 20 are unpatentable; claims 18 and 19 were not shown unpatentable, because the asserted grounds failed to establish the required limitations for those claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’008 patent “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. More education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not dispute this proposed level of skill. PO Resp. 2. We adopt Petitioner’s proposal as reasonable and consistent with 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).” slip op. at 8

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

    “In considering Patent Owner’s explanation, and upon further reflection, we agree with Patent Owner’s reading of the pertinent sentence. In that regard, consistent with the remainder of the Specification of the ’008 patent, it follows that the noted sentence does not alter the contours of “acquired” data to also encompass “passive” data where that premise is entirely absent from other portions of the Specification. Rather, as Patent Owner explains, the sentence is consistent with the understanding that it is “active data” that is connected to the word “acquired” and “passive data” that is connected to the word “available.” See, e.g., id. Patent Owner’s explanation alleviates the ambiguity that was postulated in the Institution Decision. We have considered Petitioner’s views to the contrary (see, e.g., Pet. Reply 21–25) but find them unavailing. In particular, Petitioner does not reconcile its position that, although acknowledging that “acquired data” is defined in the ’008 patent, the term “acquiring” is not so defined and should be regarded as an “individual word” whose meaning is somehow entirely unconnected to “acquired.” See, e.g., Pet. Reply 21. We note, as we did in the Institution Decision, that the ’008 patent states that “acquired data” and “its equivalents and verb forms” is “a type of active data.” See Inst. Dec. 30 (citing Ex. 1001, 3:25–32). We are not persuaded by Petitioner’s view (see, identifiable as a verb form of “acquired.” See PO Sur-reply 8. We determine that, in the context of the ’008 patent, it clearly is. Having considered the competing views of Petitioner and Patent Owner, we conclude that Patent Owner’s construction of the term “acquiring interest data” is consistent with, and supported by, the Specification of the ’008 patent. In that regard, we conclude that, as is advanced by Patent Owner, “acquiring interest data” must encompass the retrieval of some active data.” slip op. at 16

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

    “1–3 and 6–17 are found in Willner. Pet. 9–26. During trial, Patent Owner presented no arguments challenging Petitioner’s proposed ground of unpatentability of claims 1–3 and 6–17 based on Willner. During oral argument, upon questioning, counsel for Patent Owner expressed that “We did not present any arguments on Claims 1 to 3, 6 to 17 on Ground 1.” Tr. 30:3–4. We determine that Petitioner, via its Petition, has established adequately where all the features of claims 1–3 and 6–17 are present in Willner. See Pet. 9–26. Given that determination, and in the absence of any argument during trial challenging Petitioner’s ground of unpatentability based on Willner as to those claims, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–3 and 6–17 are unpatentable under 35 U.S.C. § 102 based on Willner.” slip op. at 19

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

    “Here, we conclude that: (1) the parties’ recognized level of ordinary skill in the art (see Pet. 4; PO Resp. 2); (2) the knowledge of a skilled artisan as set forth by record evidence, including the teachings of Willner and Kitts; and (3) the nature of the problem addressed in both of those references, i.e., click fraud detection, all support a determination that a skilled artisan would have had adequate reasons to combine Willner and Kitts, and would have had a reasonable expectation in doing so. To that end, we find persuasive Petitioner’s arguments in the Petition as to the proposed reasoning to combine Willner and Kitts, and also credit Dr. Lopresti’s supporting testimony. See Pet. 28–29; Ex. 1003 ¶ 118. We are mindful of the contrasting testimony referenced by Patent Owner’s declarant, Dr. Russ. See, e.g., PO Resp. 38 (citing Ex. 2011 ¶¶ 107–110). Dr. Russ testifies that, in his view, there are “practical” and “technical” “considerations” in combining Willner and Kitts that a “POSA would have had to consider in determining whether a reasonable expectation of success exists, none of which are addressed or discussed in the Petition.” See Ex. 2011 ¶¶ 107–110. The example considerations listed by Dr. Russ are reproduced below: 1. How Kitts’ passive data could be collected and stored in conjunction with the mouse vector data already being collected by Willner; 2. How to collectively analyze fundamentally different types of data—Willner’s mouse vector data on one hand, and Kitts’ passive data on the other; 3. How to generate a useful confidence score that is more accurate than the scores already generated by Willner, again taking into consideration that passive data is a fundamentally different type of data than active data; assessment using the complex statistical model of Kitts; and 5. To what extent additional computer hardware would be necessary to enable the combined system to effectively operate and whether such hardware could be reasonably implemented, taking into consideration both cost and feasibility. Ex. 2011 ¶ 108. Those considerations are generally directed to collection and use of” slip op. at 36

  Patent outcomesUS 9,595,008 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,595,008
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.Some claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00586 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–15 and 26–30 are unpatentable as obvious over Lau and Benson; claim 28 also relies on Harring. Qualcomm did not show claims 16–25 unpatentable.

  RulingsFinal written decision

  • Exclude

    “We do not rely on Exhibits 1010, 1014, 1026, or 1027 for any determinations or findings in this decision. See infra note 10 (noting the context in which Ex. 1014 has been cited). When we use the phrase “evidence of record” or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of FedEx’s Motion to Exclude, that is, Exhibits 1010, 1014, 1026, 1027, and 2049. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1010, 1014, 1026, and 1027 is dismissed as moot.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Almeroth essentially agrees with Qualcomm’s articulation of the level of ordinary skill as expressed above. See Ex. 2200 ¶¶ 45–46. Because Qualcomm’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’231 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:16–2:37 (“Field of the Disclosure” and “Background” sections of the ’231 patent, describing background knowledge about methods for tracking packages using wireless sensor devices). Qualcomm also contends that an ordinarily skilled artisan “would have been familiar with the field of technology described [on pages 7–13 of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 7. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Almeroth agrees. Ex. 2200 ¶ 46. the Petition].” Id. (citing Ex. 1002 ¶ 41). The “Field of Technology” section of the Petition refers to background knowledge of RFID technology and hierarchical sensor networks. See Pet. 7–13. Because whether this subject matter is part of the background knowledge in the art is not determinative of our decision, we need not adopt this part of Qualcomm’s articulation of the level of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point. Regarding FedEx’s term-differentiation argument, we agree with Qualcomm that, based on the above evidence in the ’231 patent disclosure, there does not appear to be any meaningful difference between “unable to” and “not operative to” as those terms appear in the claims. Thus, we disagree with FedEx’s proposed construction of “unable to directly communicate with the server.” Our prior-art analysis below will be informed by the discussion above, but we need not explicitly construe this term to resolve the issues raised in the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 12

  Patent outcomesUS 9,182,231 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,182,231
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc v. Power2b Inc.Some claims unpatentable
  PTAB · Jul 14, 2023 · IPR2022-00405 · APJ John D Hamann · IPR · Final written decision

  Claims 1–19 and 21 are unpatentable over the instituted obviousness grounds; claim 20 was not shown unpatentable over Bird, Ishii, and Geva.

  RulingsFinal written decision

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

    “4. Extrinsic Evidence Patent Owner extensively cites to the testimony of Dr. Cairns in” slip op. at 19

  • Skill levelSkill level board ownOther

    “II. LEVEL OF ORDINARY SKILL IN THE ART To determine whether an invention would have been obvious at the” slip op. at 8

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

    “9. Input Circuitry Petitioner argues that Bird teaches “input circuitry receiving the output indication and providing an electronic input representing at least one of two-dimensional position, three-dimensional position and orientation of the input object,” as recited in claim 1. Pet. 42–44. More specifically, Petitioner argues that Bird’s “Figure 10 discloses ‘detection circuitry 40’ as input circuitry.” Id. at 42 (citing Ex. 1009, 8:2–7, Fig. 10). According to Petitioner, Bird states that the “[i]nput information to the light sensing array [] is detected by the associated detection circuit, here referenced at 40, which detects X-Y position and twist of the pen and provides outputs accordingly to a central processing unit 42 via an input/output interface 41.” Id. (quoting Ex. 1009, 8:2–7). Petitioner adds that “Ishii similarly discloses circuit 61 for determining output indication and providing an input to character- recognizing section 64.” Id. (quoting Ex. 1010 ¶ 62, citing Fig. 11). In addition, Petitioner argues that “Bird discloses an electronic input representing both a two-dimensional position and orientation of said input object.” Id. at 43 (citing Ex. 1002 ¶ 111). Petitioner argues, for example, that “Bird discloses that ‘[t]he X-Y position of the light spot on the array . . . [is] detectable.” Id. (quoting Ex. 1009, 2:40–44). In addition, Petitioner argues that “Bird also teaches determining ‘orientation’ when it senses that . . . ‘the direction of rotation of the beam [is] determined’ by monitoring the sensing elements outputs.” Id. at 44 (quoting Ex. 1009, 5:65–6:5) (second alteration in original). According to Petitioner, “Bird explains that the sensing elements provide[] an output of the ‘rotation of the pen/light beam around its axis’ which ‘can readily be detected by virtue of different sensing elements 14.’” Id. (quoting Ex. 1009, 6:46–48). Petitioner argues that “[t]he Bird-Ishii combination also detects the X and Y positions of the light incident on the display surface and orientation, which is same as the position of the input object on the surface.” Id. (citing Ex. 1010 ¶¶ 53, 58–60). According to Petitioner, one of ordinary skill in the art “would have adapted the input circuitry of Bird to respond to the sensor configuration of Ishii.” Id. (citing Ex. 1002 ¶ 113). After reviewing Petitioner’s arguments and evidence, which are not” slip op. at 48

  • BurdenFwd mixedNot shown unpatentable

    “E. Challenged Claim 20 Claim 20 recites “[a] method for making an electronic input device according to claim 17, the method further comprising detecting thresholds of intensity of the electromagnetic radiation pattern on the input area, and generating control signals by the input circuitry.” Ex. 1001, 10:20–24. Patent Owner argues that Petitioner ignores the “generating control signals by the input circuitry” claim language, and “does not reference, discuss, or argue any disclosure of Bird, Ishii, or Geva discloses or suggests this recital.” PO Resp. 67 (citing Pet. 54–56). We agree with Patent Owner. Petitioner does not address where “generating control signals by the input circuitry” is taught in Bird, Ishii, or Geva, or by their combination. See Pet. 54–56; Pet. Reply 21–22. Hence, the Petition is deficient as to claim 20 for this ground. 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon for each ground.”). Accordingly, we determine that Petitioner does not show by a” slip op. at 70

  Patent outcomesUS 8,547,364 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,547,364
• Trend Micro Inc. v. Cupp Computing AsSome claims unpatentable
  PTAB · Apr 14, 2023 · IPR2019-00561 · APJ Thomas L Giannetti · IPR · Remand

  On remand, claim 16 was held unpatentable as obvious over APA and Sikdar; claim 7 was not shown unpatentable over Sikdar and Wright.

  RulingsRemand decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner contended “[a] person of ordinary skill in the art at the time of the alleged invention of the ’272 patent (i.e., May 30, 2007) . . . would have had a Bachelors’ degree in computer science, electrical engineering, or a comparable field of study, plus at least two years of professional experience with computer security systems and networks, or the equivalent.” Pet. 8 (citing Jakobsson Decl. ¶ 49). In our Final Written Decision, we adopted Petitioner’s description of the person of ordinary skill over an alternative formulation by Patent Owner’s expert, Dr. Medvidovic. FWD 17. However, we decided that we would reach the same result even under Dr. Medvidovic’s alternative formulation. Id. The level of ordinary skill adopted by us has not been further disputed by the parties, nor is it discussed in the Federal Circuit’s Decision. We therefore apply the same formulation for the reasons given in our Final Written Decision.” slip op. at 15

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

    “Patent Owner asserts that in Petitioner’s analysis of claim 16, “Petitioner reads out any distinctions between ‘at least a subset’ and ‘a subset.’” PO Resp. 45. Petitioner responds that “[t]he Board should reject Patent Owner’s argument that ‘the subset’ must be a ‘proper subset,’ i.e., a set that is less than the full set of outgoing data.” Pet. Reply 5. Petitioner cites dictionary definitions and other additional authorities to support this conclusion. Pet. Reply 5–6 (citing, e.g., Exs. 1022, 1023, 1024). For example, A Dictionary of Computing defines “subset” as “[a] set T whose members are all members of S,” and contrasts this with a “proper subset.” Ex. 1023, 3. Petitioner further points out that the antecedent basis of “at least a subset” for “the subset” in claim 16 supports its construction. Pet. Reply 6. In our Final Written Decision, after considering Petitioner’s evidence and the language of the claim, we found that the references to “subset” in claim 16 should be construed broadly enough to read on providing any portion of the outgoing data, up to and including all the data, and not a proper subset. FWD 24–25. For the reasons summarized above and those given in our Final Written Decision, we find that the term “subset” in claim 16 does not limit the claim to a “proper subset,” i.e., the claimed subset may include all the members of the set.” slip op. at 16

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

    “Applying the Federal Circuit’s “flexible” standard, we find that for the reasons given that Petitioner demonstrates a motivation to combine Sikdar and the APA, as proposed by Petitioner, with a reasonable expectation of success. We disagree with Patent Owner’s arguments and find that a person of ordinary skill would have been motivated to add Sikdar’s NAT/PAT capability to the prior art network system of Figure 18, disclosing a software-based firewall. Pet. 55–58; Pet. Reply 23–25. As Petitioner points out, Sikdar’s RSP “does not include any NICs . . . , which are a separate hardware component.” Pet. Reply 24. We agree with Petitioner that Patent Owner’s argument is not convincing. More importantly, however, Patent Owner’s argument fails because in Ground 3, Petitioner does not propose combining “any device containing two NICs with the APA.” Id. Petitioner proposes combining “the RSP’s NAT/PAT functionality with the APA.” Id. at 24–25 (citing Pet. 55–58) (emphasis added). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 34

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

    “non-obviousness, including long-felt need, failure of others, and skepticism by experts in the industry. PO Resp. 50–52. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Before reaching a decision on obviousness of claim 16, we must weigh these secondary considerations. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1075–76 (Fed. Cir. 2012). “The patentee bears the burden of showing that a nexus exists.” WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). To determine whether the patentee has met that burden, we consider the correspondence between the objective evidence and the claim scope. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (citation omitted). We concluded, in our Final Written Decision, that Patent Owner had failed to meet its burden. FWD 47–50. We agreed with Petitioner that Patent Owner had failed to establish the required nexus to its claims. Id. at 49. We agreed also that Patent Owner had not provided convincing evidence supporting the existence of such objective indicia. Id. We find that, for the reasons given in our Final Written Decision, which we adopt for this Final Written Decision on Remand, Patent Owner’s evidence of secondary factors is insubstantial and unconvincing, and we therefore give it minimal weight in considering the obviousness of the challenged claims.” slip op. at 40

  Patent outcomesUS 8,365,272 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,365,272

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.