• Platinum Optics Technology, Inc. v. Viavi Solutions Inc.All claims unpatentable
  PTAB · Apr 11, 2024 · IPR2022-01489 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–19 are unpatentable: Hendrix anticipates them, and the listed combinations also render their respective claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In the Decision on Institution, we adopted a slightly modified version of this definition in which we removed the open-ended term “at least.” Inst. Dec. 10–11. Patent Owner does not address the definition of a POSA. See generally PO Resp. Patent Owner’s declarant Dr. Clemens applies Petitioner’s definition, but does not opine on whether it is correct. Ex. 2001 ¶¶ 22–23. As in the Decision on Institution (Inst. Dec. 10), we apply the same slightly modified version of Petitioner’s definition of the level of ordinary skill in the art that removes the open-ended term “at least.” We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ794 patent and the” slip op. at 11

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

    “filter comprises “a third set of layers on the second side, whether the third set of layers includes oxygen.” Ex. 1001, 10:41–49. Petitioner argues that the proper construction of this limitation “means that there is a third set of layers on the opposite side of the substrate, whether or not [the layers] include oxygen” – i.e., that the third set of layers do not need to include oxygen. Pet. 7–8. Patent Owner agrees that this is the “literal” reading of the language, but contends that one of ordinary skill in the art “would have appreciated that this language was intended to read ‘wherein’ rather than ‘whether’” and that the claim requires that this set of layers must include oxygen. PO Resp. 24–26 (citing Ex. 2001 ¶¶ 53–55). We agree with Petitioner’s representation that each of the challenges presented either anticipates or renders obvious a third set of layers with oxygen on a second side of a substrate (Pet. 8) and therefore, no claim construction is necessary for this term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

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

    “415 F.3d at 1314): “a first set of layers on the first side, wherein the first set of layers includes silicon and hydrogen” (claim 1) and “a first set of layers including silicon and hydrogen” (claims 9 and 15). Ex. 1001, 10:41–49, 10:65–11:4, 11:17–12:5. As the parties agree, these recitations are broadly worded. See Pet. 14 (describing the recitations of the claims as “broad” and directed to “layers of any material that has both ‘silicon and hydrogen’”); PO Resp. 42 (describing the claims as “simply specifying physical layers including silicon and hydrogen in them”), 44 (describing the disputed terms as “open-ended claiming of layers including hydrogen and silicon”). Despite this broad language, Patent Owner contends that we must read “layers including silicon and hydrogen” in conjunction with other limitations in the claims reciting a “near infrared bandpass filter.” PO Resp. 35–37 (citing Ex. 2001 ¶¶ 65–66). For purposes of our analysis, we limit “layers including silicon and hydrogen” to only materials suitable for NIR bandpass filters, as suggested by Patent Owner. We next examine the rest of the intrinsic evidence. The specification of the ’794 patent does not contain language that generally describes “layers including silicon and hydrogen.” Instead, the specification describes only layers of hydrogenated silicon: its abstract is directed to an “optical filter” that “includes a filter stack formed of hydrogenated silicon layers” (Ex. 1001, code (57)); the technical field of the invention is described as “relat[ing] to optical filters including hydrogenated silicon layers and to sensor systems comprising such optical filters” (id. at 1:20–23); the summary of the invention describes “the present invention” as an optical filter or sensor system “comprising” “a plurality of hydrogenated silicon layers” (id. at 2:57–3:19); and the detailed description begins with a hydrogenated silicon (Si:H) layers” (id. at 4:19–20). The specification only mentions silicon and hydrogen separately with respect to the disclosed sputter-deposition system “used to produce the hydrogenated silicon material.” Id. at 4:35–5:61, 7:10–19. In particular, the specification describes how “cathode 430 includes a silicon target 431, which is sputtered in the presence of hydrogen (H2), as well as an inert gas such as argon, to deposit the hydrogenated silicon material as a layer on the substrate 420.” Id. at 4:44–47. The specification also describes how altering the hydrogen flow rate in the deposition process affects the optical properties of hydrogenated silicon produced by the deposition system. See id. at 5:1–61. But the only end product described from the sputter-deposition process using silicon and hydrogen is hydrogenated silicon. See id. at 4:35–5:61, 7:10–19. As such, the specification does not provide any indication of materials beyond hydrogenated silicon that are within the scope of “layers including silicon and hydrogen.”” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “hydrogen” defines a genus. The test for providing a written description that supports a genus claim is whether the description provides “either a representative number of species falling within the scope of the genus or in the art can ‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). “Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared.” Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1358 (Fed. Cir. 2023). Yet the patentees only disclosed hydrogenated silicon as a possible species. Indeed, the specification focuses on a singular example of a sputterdeposition system that is used to produce an improved hydrogenated silicon material. See Ex. 1017 ¶¶ 36–38. Patent Owner cites this deposition process as written description support for “the claimed layers containing silicon and hydrogen.” See PO Resp. 44. But this example supports only how to make hydrogenated silicon and does not include any indication about what other materials would be within the scope of the claimed genus. Under these circumstances, the specification’s disclosure of a single species is not an adequate number to show possession of the entire genus of “layers including silicon and hydrogen.” Beyond the disclosure of the sputter-deposition process for producing hydrogenated silicon, Patent Owner does not identify—and we cannot discern—any other examples of a “structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Ariad, 598 F.3d at 1350. This is particularly noteworthy given that undisputed record evidence shows numerous other potential filter materials “including silicon and hydrogen.” See supra § II.D.1.a. In the absence of structural description supporting “layers including silicon and hydrogen,” we determine that an” slip op. at 19

  Patent outcomesUS 11,131,794 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,131,794
• Configit A/S v. Versata Development Group, Inc.All claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01055 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–5 and 9–19 are unpatentable as obvious under § 103 over the combinations of Oracle1, Oracle2, and the additional references listed for each ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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. PO Resp. 11 (citing Ex. 2004 ¶¶ 35–37). We continue to 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. See Dec. 6.” slip op. at 6

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

    “With respect to this rationale, we are not persuaded by Patent Owner’s arguments. The first part of the claim construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify 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. While it seems clear that “internal” errors may result in a “configuration error,” we are not persuaded that the specification limits the term to only such errors. Further, the recitation in the specification that the invention is concerned with configuration errors in a system for configuring products describes generally the context of such configuration errors, and not that they need to be explicitly “in” the system. As such, we are not persuaded that “configuration errors,” as recited in the instant claims must be limited to errors contained in the configuration engine.” slip op. at 10

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

    “Looking at all of the evidence presented and taking the arguments of the parties into consideration, we continue to determine that Petitioner has sufficiently shown that Oracle1 and Oracle2 were publicly available to serve as art under § 102(a). We further determine that Petitioner has shown by a preponderance of the evidence that the references were published at dates consistent with the evidence and testimony submitted, with the publication date for Oracle1 as April 30, 2000 and with the publication date for Oracle2 as March 31, 2000.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “arguments. We find it curious that Patent Owner has not polled its own expert declarant or provided other evidence such as a survey of the appropriate literature at the time that the application that resulted in the ’766 Patent was filed to provide a showing of what the appropriate understanding of “configuration error” would have been. Looking to the examples cited in Dr. Woods testimony, they are purely exemplary, and he is certainly not definitive, as Patent Owner appears to acknowledge, when using the term “configuration error.” Patent Owner seeks to have us give weight to the portions that seem to support its understanding of the claim term, but give less weight to portions that do not, asserting the latter to be guided only by hindsight. This does not even address Patent Owner’s other assertions that Dr. Woods declaration should be entitled to little weight because it is “incomplete.” PO Resp. 37–39. In sum, according to Patent Owner, we should pick and choose aspects of Dr, Wood’s testimony to support Patent Owner’s contention, where the overall declaration should be given little weight. Looking at the totality of Dr. Wood’s testimony and his deposition testimony (Exs. 1002, 2005), we are not persuaded that it supports the proposition that Patent Owner relies upon to illustrate, namely that those of skill in the art would have known that configuration errors are internal to the configurator. Exemplary of this, Dr Wood avers that “[t]hroughout my Declaration I provide context of other configuration errors that would be understood by a person of ordinary skill in the art at the time of the patent. They can include syntax types of errors, semantic errors, logical errors, logical rule errors, as examples.” Ex. 2005, 59:22–60:05. Petitioner points out that Dr. Wood cited examples from Exhibits 1006, 1033, 1046, and 1050 pertaining to “configuration errors,” and those citations are not limited to those that would have been internal to the configurator. Pet. Reply 8 (citing Ex. 1002 ¶¶ 40–41, 48–49). As such, we are not persuaded that there is sufficient evidence before us that those of skill in the art would have known that configuration errors are internal to the configurator.” slip op. at 13

  Patent outcomesUS 6,836,766 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,766
• Astronics Test Systems, Inc. v. Teradyne, Inc.All claims unpatentable
  PTAB · Jul 20, 2022 · IPR2021-00350 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–8 are unpatentable as obvious over Schinabeck; the Board did not reach the Miyamoto and Frame grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s definition of the level of ordinary skill in the art with minor modification (Dec. 8–9; see Pet. 20). In particular, we removed the qualifier “at least” from the education level and from the experience level, because the qualifier introduces ambiguity. Patent Owner does not dispute this determination of the level of a person of ordinary skill in the art at the time of the invention (PO Resp. 8). Thus, we determine an ordinarily skilled artisan at the time of the invention would have had (i) a bachelor’s degree in electrical engineering, computer engineering, or a related field and (ii) one year of experience with testing of electronic equipment. We determine this asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’479 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)).” slip op. at 10

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

    “execute a user program, the test equipment comprising” is the preamble and that it is limiting (Ex. 1003, 13:57–58; PO Resp. 9). In particular, Patent Owner contends, “the preamble of claim 1 [is] limiting because it serves as antecedent basis for multiple terms in the body of the claim, and it supplies ‘essential structure’ of the claimed invention” (PO Resp. 9). Petitioner does not address this contention (see Pet. Reply 4–5). We agree with Patent Owner that the preamble is limiting because the body of the claim refers to the user program as well as the automatic test equipment (Ex. 1003, 13:57–58, 14:14–17; see Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) ([D]ependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention”)). Patent Owner asserts the following limitation, “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), “although formatted within the same paragraph as the preamble[,] is not actually part of the preamble, but rather part of the body of the claim” (PO Resp. 10). However, further in its argument, Patent Owner flips its statement in arguing “input signal having a value” and contends this is a “requirement[] of the preamble” (id. at 11). Petitioner’s contentions are only directed to the limitation (Pet. Reply 4–5).” slip op. at 12

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

    “Initially, we note the claim recites “a channel circuit having a signal connection point adapted to be coupled to a signal line of a unit under test to receive an input signal having a value” (Ex. 1003, 13:58–61), Thus, due to the recitation, we determine the input signal could be either that the signal connection point receives an input signal or the channel circuit receives an input signal (id.). The next limitation recites the comparison sub-circuit has “a signal input . . . wherein each of the comparison sub-circuits is adapted to produce a comparison output signal at the comparison output having a value input signal” (id. at 13:62–14:3). The claim does not recite that the “signal input” receives “the input signal.” Nevertheless, in light of the claim language and the Specification and because Petitioner has contended both interpretations are shown, we interpret the recited “input signal” as the signal received from the UUT. The portion of the ’479 Patent describing, in part, Figure 1, cited by Patent Owner discloses ATE 139 includes multiple instruments that may generate and measure signals. A host computer 120 executes a software program that controls operation of each of the instruments. Host computer 120 may be programmed to analyze these outputs to determine whether the system under test 189 is operating properly. Such programming is traditionally a part of a user program and drives programmed values and compares measured values to expected values on one or more signal lines connected to the UUT. These steps may be programmed for multiple lines for multiple test cycles (Ex. 1003, 3:32–51; PO Sur-reply 3). The ’479 Patent further describes an “ATE . . . provide[s] stimulus to . . . the UUT and then measure[s] the output to determine if the UUT has performed to its specifications” (Ex. 1003, 1:30–33; PO Sur-reply 3). Thus, these descriptions support both interpretations. Nevertheless, the ’479 Patent describes a signal being supplied and compared to expected values. Accordingly, we interpret “an input signal” as being the signal received from a unit under test (UUT).” slip op. at 14

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

    “We determine Schinabeck teaches the structure of the comparison sub-circuits recited in claim element 1a. Indeed, given that switches and comparators were known (Tr. 35:5–8; Ex. 1026, 17:17–18:8, 30:16–22), we determine switching certain switches on or off is a switch performing the same function it had been known to perform, yielding no more than one would expect from such an element (KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007)). Thus, turning switches off or on in Schinabeck’s circuitry, would not have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” (see Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19)). A skilled artisan is “a person of ordinary creativity, not an automaton” (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). An ordinarily skilled artisan “must be presumed to know something” about the art “apart from what the references disclose” (In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)). We further credit Dr. Wicker that an ordinarily skilled artisan “would have understood that switch K3a can be opened or closed depending upon the desired test set-up” and “by definition, switches are controlled to be open or closed” (Ex. 1001 ¶ 90). And again, Schinabeck contemplates use of the circuitry as recited, as described in claim 10 discussed supra. We thus are persuaded that Schinabeck teaches or at least suggests limitation 1a). We are also not persuaded Petitioner used impermissible hindsight reconstruction as the circuitry elements in Schinabeck are being used as was known to be used for the purpose of “monitoring response signals during automated testing of any other circuit elements –– Petitioner is relying on closing switches in the disclosed circuity of Schinabeck (Pet. 25–27). Additionally, Schinabeck discloses coupling comparison circuits to the same response signal (Ex. 1008, 11:49–53, 12:56–13:7, 4:49–66 and thus, Patent Owner’s contention that this grouping is “not any ‘desired’ configuration for functional or parametric testing” in Schinabeck is not supported by Schinabeck’s disclosure.” slip op. at 31

  Patent outcomesUS 7,395,479 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,395,479
• Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Oct 5, 2021 · IPR2018-01039 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–3, 7, 10, 11, 14, and 15 are unpatentable as obvious over Dougherty under 35 U.S.C. § 103.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine the only reasonable interpretation of the declaration is that Dr. Hall-Ellis is relying on university libraries’ general practice for indexing, cataloging, and shelving books in estimating the time it would 781 F.2d 897, 899 (Fed. Cir. 1986)). We have no evidence rebutting Dr. Hall-Ellis’s testimony as to university library practice (see id.). Although there is some discrepancy in what printing of Dougherty was relied upon when the MARC record and OCLC records were created, and what printing was cataloged and shelved, we determine, as a whole, these records evidence that the technical content of Dougherty relied upon was available at multiple libraries before the priority date. We determine Dr. Hall-Ellis’s declaration is competent evidence, and in light of the record before us, are persuaded the testimony and proffered evidence show Michigan Dougherty was accessible prior to the critical date.” slip op. at 42

  • 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 v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill)). Based on the record before us and in view of the parties’ agreement at this stage of the proceeding, we adopt Petitioner’s formulation of the level of ordinary skill in the art, with the exception of the language “at least,” which introduces ambiguity. Thus, we determine, based on the record before us, a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer science, or equivalent degree or experience, with (i) two years of experience in the design and/or development of database and record management systems or (ii) more formal education in computer science, such as a Master’s degree, without the two years of practical experience.” slip op. at 9

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

    “[a] virtual database is a sequence of characters organized into one or more sections. Each section contains zero or more records, with each record made up of one or more fields containing information. Each section of the virtual database has an associated schema which describes the format of the records and fields. The virtual database itself has a schema which describes the format of the entire virtual database. The schema of the virtual database includes the schemas of each of the sections. A virtual database (VDB), such as initial VDB 106, is self contained and may be operated on further by other operators. A VDB is self contained, in that if a record is referred to in a field in the VDB, then the referred to record is contained in the VDB. (Ex. 1001, 3:28–42 (emphasis added).) The meaning of “virtual database” is clearly and deliberately set forth in the ’062 Patent so as to put an ordinarily skilled artisan on notice as to its intended definition.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “(Phillips, 415 F.3d at 1316.) The applicants set forth a special definition to the claim term, “virtual database,” in the Specification of the ’062 Patent (Ex. 1001, 3:28–42). Thus, the inventor’s lexicography governs. Nonetheless, we address Patent Owner’s contention that flat file databases are disclaimed. To that end, we determine the applicants did not set forth words or expressions of manifest exclusion or restriction. “[I]n order to disavow claim scope, a patent applicant must clearly and unambiguously express surrender of subject matter during prosecution” (Arendi S.A.R.L. v. Google LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018)).” slip op. at 15

  Patent outcomesUS 5,806,062 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,806,062
• Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00864 · APJ Debra K Stephens · IPR · Final written decision

  Claims 3, 5, and 9 are unpatentable under § 103 because the Board found the asserted prior-art combinations taught the limitations required by its claim construction.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have [had] at least a Bachelor of Science degree in Electrical Engineering, Computer Science, or an equivalent field, as well as at least 2-3 years of academic or industry experience in the field of content delivery networks or comparable industry experience(s)” (Pet. 13 (citing Ex. 1002 ¶ 32)). Patent Owner does not dispute Petitioner’s assertion regarding the education or experience of an ordinarily skilled artisan at the time of the invention (see generally PO Resp.). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F. 3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Houh and Jones (Ex. 1002 ¶ 32; Ex. 2018 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two to three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 8

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

    “be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10

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

    “1. Claim Terms Claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure (In re Translogic Tech., Inc., 504 F.3d 149, 1257 (Fed. Cir. 2007)). An inventor may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). In the absence of such a definition, limitations are not to be read from the specification into the claims (In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)). a) “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation. b) Other terms Based on the trial record, we determine that no additional terms require explicit construction (see, e.g., 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 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “independent claims 3 and 9 were mutually exclusive (Dec. to Inst. 8–9). We stated: As a matter of law, therefore, we determine with respect to claims 3 and 9, only one of the conditional limitations needs to be satisfied in the prior art to render the claim anticipated or obvious (see Ex Parte Schulhauser (Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential), at 8–10 (holding that conditional steps in process claims need not be carried out when conditions precedent to those steps are not satisfied to be within the broadest reasonable interpretation of the claim))” slip op. at 11

  Patent outcomesUS 9,462,074 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,462,074
• Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Sep 9, 2019 · IPR2018-00599 · APJ Debra K Stephens · IPR · Final written decision

  Claims 3 and 9 are unpatentable under § 103 because the cited combinations teach the claimed limitations that the Board found limiting.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related subject, and two or three years of work experience with network-based applications and/or multimedia applications. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 6-7 years) (Pet. 7–8 (citing Ex. 1005 ¶ 38)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.; Ex. 2002 ¶¶ 19–20). We note that the assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding (see Okajima, 261 F.3d at 1355). Based on our review of the ’074 Patent, the types of problems and solutions described in the ’074 Patent and cited prior art, and the testimony of Drs. Reddy and Jones (Ex. 1005 ¶ 38; Ex. 2002 ¶¶ 19–20), we determine a skilled artisan would have possessed a Bachelor of Science degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field, and two or three years of work experience with content delivery networks or applications or comparable education or work experience in the field.” slip op. at 9

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

    “a. “helper server” The ’074 patent describes “helper server” in the following terms: “Helper Server (HS): a HS, also referred to as a helper, is one of a plurality of servers in the network that provide certain value-added services” (Ex. 1001, 4:11–13). Accordingly, we adopt this interpretation.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We agree with Petitioner that neither claim 3 nor claim 9 recites where the “receiving” step takes place and, in particular, neither claim recites “receiving said SM object” at the plurality of or one of the helper servers. [C]laim terms cannot be narrowed by reference to the written description or prosecution history unless the language of the claims invites reference to those sources. See, e.g., McCarty v. Lehigh Val. R.R., 160 U.S. 110, 116, 16 S. Ct. 240, (1895) (“[I]f we once begin to include elements not mentioned in the claim in order to limit such claim ..., we should never know where to stop.”); Renishaw [PLC v. Marposs Societa per Azioni], 158 F.3d 1243, 1249 [(Fed. Cir. 1998)]. In other words, there must be a textual reference in the actual language of the claim with which to associate a proffered claim construction (Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989–90 (Fed. Cir. 1999)). Here, we do not find a textual reference in “receiving said SM object.” We determine that the inventors did not introduce their own lexicographic definition, i.e., defining the term “receiving said SM object” or “receiving.” Furthermore, we are not persuaded “the term or terms chosen by the patentee[s] so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used” (see id. at 990 (citations omitted)). Nor do the preambles of claim 3 and 9, respectively, provide any textual reference that “receiving said SM object” should be interpreted as “receiving said SM object at a helper server.” Thus, “[i]n this case, the [disputed term] has a clear and well-defined meaning. This term is not so amorphous that one of skill in the art can only reconcile the claim language with the inventor’s disclosure by recourse to the specification” (Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We disagree with Patent Owner’s assessment of the preambles of claims 3 and 9. The preamble of claim 3 recites: A method for storing a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of helper servers (HSs) to a plurality of clients, said SM object being comprised of a plurality of successive time-ordered chunks, wherein a chunk is further comprised of a discrete number of segments, each segment allocated to a respective disk block of said plurality of HSs, and the preamble of claim 9 recites: A method for managing storage of a streaming media (SM) object in a network having a content server which hosts SM objects for distribution over said network through a plurality of servers to a plurality of clients (Ex. 1001, Claims). Neither of the preambles recites that storage depends on the availability of disk space. Patent Owner additionally points to Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 64 at 11–14 (PTAB Mar. 1, 2018) (PO Resp. 10). Claim 1 of Reactive Surfaces recites:” slip op. at 20

  Patent outcomesUS 9,462,074 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,462,074
• RPX Corporation / Huawei Enterprise USA, Inc. et al. v. Parity Networks, LLCAll claims unpatentable
  PTAB · Apr 9, 2019 · IPR2018-00100 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1–4, 6–9, 11–16, and 18–19 as obvious over Wilford; claims 5, 10, and 17 as obvious over Wilford and Ayres.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art of the subject matter of the ’378 patent would have had “(a) a bachelor’s degree in computer science or electrical engineering, and four or more years of experience with networks and networking devices, or (b) a master’s degree in computer science or electrical engineering, and two or more years of experience with networks and networking devices.” Pet. 10 (citing Ex. 1105 ¶¶ 30–34). Patent Owner does not offer a proposed level of skill in its Patent Owner Response and does not address Petitioner’s assertions regarding the education or experience of an ordinarily skilled artisan at the time of the invention. See generally PO Resp. We adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima, 261 F.3d at 1355; GPAC Inc., 57 F.3d at 1579 (Fed. Cir. 1995); Oelrich, 579 F.2d at 91.” slip op. at 8

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

    “All challenged claims require a “hardware queue.” Petitioner argues “under BRI, the term ‘hardware queue’ should be interpreted to include hardware that is configurable by software to form a queue.” Pet. 42 (citing Ex. 1105 ¶ 210). Petitioner also suggests that an alternative definition of the term could “require special-purpose hardware circuitry to control at least some portion of the queue.” Id. at 44. Patent Owner does not define explicitly “hardware queue.” Nevertheless, Patent Owner’s declarant asserts “[t]he plain and ordinary meaning of a hardware queue, is well known,” i.e., that “such a queue would be designed by a circuit designer and formed to function as a queue as part of the manufacturing process of an electronic circuit,” and that it differs from a software queue “formed by software operating on general purpose or multi-purpose hardware.” Ex. 2001 ¶ 34. Additionally, Patent Owner’s argument in the Patent Owner Response suggests “hardware queue” means that the queue cannot be a “software queue” and “must be implemented in hardware.” PO Resp. 7, 9–12 (stating “Petitioners do not assert that the queue must be implemented in hardware”).” slip op. at 9

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

    “Petitioner demonstrates reasons supported by a rational underpinning for combining Wilford and Ayres, including at least that the combination uses known methods to obtain predictable results. Pet. 61–66. For example, Petitioner provides evidence and argument that: A [person of ordinary skill in the art at the time of the invention] would have understood that monitoring CPU utilization as taught in Ayres is a conventional technique for monitoring CPU load in relation to the CPU’s capacity, and that known technology could be employed in Wilford to monitor utilization of the linecard’s CPU (as Ayres does) and provide that information to the added dynamic packet flow rate control module. (Lavian, ¶259 (discussing Ayres and citing Ex. 1112 at 4:67, 9:62-65, 10:18- 20, and 10:26)). Pet. 66. We agree with and adopt Petitioner’s contentions in the Petition as to claims 5, 10, and 17.” slip op. at 36

  • Strike new argumentNew argument consideredDenied

    “because it contains allegedly new arguments. Paper 24. Specifically, Petitioner states Patent Owner argued for the first time “a hardware queue” requires some unspecified “structure” “define[d]” by hardware “such as shift registers.” Paper 42, 2 (citing Sur-Reply at 2–3). Petitioner also asserts that Patent Owner, for the first time in “[t]he Sur-Reply[,] offers unsupported attorney arguments about alleged differences between the ‘hardware queues’ in Exs. 1110 and 1111 and Wilford’s queues based on alleged differences between SRAM and DRAM.” Paper 42, 3 (citing Sur-Reply at 2–3). Petitioner asserts Patent Owner’s arguments could have been made in the Patent Owner Response and thus are waived. Paper 8, 3 (arguments not in POR “will be deemed waived”); Update to the Trial Practice Guide (83 Fed. Reg. 38,989 (Aug. 13, 2018) (notifying the public of the updated “Trial Practice Guide” and its accessibility through the USPTO website: https://go.usa.gov/xU7GP)) at 15 (a “sur-reply that raises a new issue or belatedly presents evidence may not be considered”; a sur-reply may “respond” to arguments “raised” in the reply but “respond … does not mean embark in a new direction with a new approach as compared to positions taken in a prior filing.”). Petitioner’s motion is denied. Patent Owner’s reference to “shift registers” is in response to arguments in the Reply regarding the definition of hardware queue. Additionally, Patent Owner’s reference to Exhibits 1110 and 1111 are in response to Petitioner’s reference to those exhibits for the first time in its Reply.” slip op. at 37

  Patent outcomesUS 6,738,378 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,738,378
• Unified Patents Inc. v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Apr 9, 2019 · IPR2018-00096 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3 and 8–10 are unpatentable under § 103 over Bernstein alone and over Bernstein combined with Rubin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Thus, Dr. Jones does not disagree with Petitioner and Dr. Franzon’s assessment but, rather, offers additional exceptions and qualifications, which 4 Dr. Phillip Gibbons is Petitioner Hulu’s declarant in IPR2018-00017, and Dr. Franzon and Dr. Gibbons offer the same assessment as to the level of ordinary skill in the art, as noted by Dr. Jones. See Ex. 2012 ¶ 20. we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Franzon’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8

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

    “Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1001, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.5” slip op. at 10

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

    “titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 9. Petitioner introduces 6 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims. additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1006 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1007 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)), 1015 (declaration testimony of Dr. Sylvia Hall-Ellis that Bernstein was publicly available no later than March 3, 1986), 1018 (Machine Readable Cataloging (“MARC”) record for Bernstein). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 12

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

    “g. Conclusion as to claims 1 and 8 In summary, we find Bernstein teaches all of the limitations of claims 1 and 8, and we also find the combination of Bernstein and Rubin teaches all of the limitations of claims 1 and 8. In addition, we find that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the invention recited in claims 1 and 8 based on Bernstein alone and based on the combined teachings of Bernstein and Rubin. We also find that a person of ordinary skill in the art would have been motivated to combine the teachings of Bernstein and Rubin. Having considered the full record developed during trial, we conclude Petitioner has shown, by a preponderance of the evidence, that the subject matter of claims 1 and 8 would have been obvious under 35 U.S.C. § 103(a) based on Bernstein alone and based on the combined teachings of Bernstein and Rubin.” slip op. at 36

  Patent outcomesUS 6,125,371 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,125,371
• Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Apr 9, 2019 · IPR2018-00366 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3 and 8–10 are unpatentable as obvious over Bernstein alone and over Bernstein combined with Blake.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree that this testimony undermines Dr. Gibbons’s opinions because Petitioner and Dr. Gibbons rely on Bernstein’s MVTO disclosures, not Bernstein’s other multiversion techniques, to show obviousness of the claims, a point made by Patent Owner in its Response. PO Resp. 4 (“That a practical garbage collection algorithm for Bernstein’s MVTO was not commonly known as of the Patent’s invention date is also highlighted by the fact that, in contrast to Bernstein’s lack of disclosure with respect to its discussion of MVTO, Bernstein does indeed disclose practical garbage collection algorithms for both of the other multi-version concurrency control methods that it discusses—however, the Petition does not suggest that either of these other methods renders the claimed inventions obvious.”). Furthermore, the examining attorney’s question about “whether a designer or a POSITA in 1997 would choose Bernstein’s third mixed method of multiversion concurrency control as opposed to the multiversion timestamp ordered or vice-versa” (Ex. 2017, 28:12–18) is irrelevant to the issues in this case. Dr. Gibbons testified that he “latched on to the multiversion timestamp ordering as an example of a concurrency control algorithm that teaches the claims.” Ex. 2017, 28:2–5; see KSR, 550 U.S. at 419 (“What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103.”). That Bernstein discloses other techniques in addition to MVTO does not diminish the teachings of MVTO relied upon by Petitioner and Dr. Gibbons. Therefore, we do not agree with Patent Owner that Dr. Gibbons’s testimony should be given no weight. Rather, we have weighed the evidence before us in arriving at our conclusions, as laid out in our analysis above.” slip op. at 40

  • Skill levelSkill level petitioner adoptedOther

    “Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8

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

    “Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics-or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1201, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10

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

    “§ 102(b) (pre-AIA) because it was published on March 1, 1995, more than one year before the earliest patent application filing date on the face of the ’371 patent.” Pet. 18. In its Preliminary Response, Patent Owner argued Petitioner failed to show Blake was publicly accessible before the August 19, 1997, filing date of the ’371 patent. Prelim. Resp. 57–59. With its Reply, Petitioner submits the Declaration of James L. Mullins, Ph.D. Ex. 1227. Dr. Mullins testifies that Blake “was publicly available and accessible no later than the end of the November 1996.” Ex. 1227 ¶ 36. During the trial, Patent Owner did not contest the status of Blake as a prior art printed publication under 35 U.S.C. § 102. November 1996 is not more than one year prior to the August 19, 1997, filing date of the ’371 patent and, thus, would not qualify Blake as a prior art printed publication under 35 U.S.C. § 102(b), as asserted by Petitioner in the Petition. Nevertheless, based on Dr. Mullins’s testimony in rebuttal to Patent Owner’s argument, we determine Blake is prior art printed publication under 35 U.S.C. § 102(a).” slip op. at 14

  Patent outcomesUS 6,125,371 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,125,371
• Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Apr 9, 2019 · IPR2018-00017 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 8–10 are unpatentable under § 103(a) over Bernstein alone and over Bernstein combined with Rubin.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “I generally agree with the level of ordinary skill described by Gibbons, except that at the time of the invention, a person of ordinary skill in the art would not have been able to devise algorithms or conduct original design or development of new database systems. Rather, a person of ordinary skill would have been able to implement database management software, such as multi-version concurrency control, based on algorithms and designs already provided to them. As will be discussed in more detail in connection with particular arguments, designing software such as multi-version concurrency control contains theoretical aspects (such as proof of correctness) and inventive aspects (such as practical garbage collection) that were beyond the abilities of the person of ordinary skill. Ex. 2012 ¶ 21. Thus, Dr. Jones does not disagree with Petitioner and Dr. Gibbons’s assessment but, rather, offers additional exceptions and qualifications, which we address in our analysis below. Because there is general agreement among the parties that Petitioner and Dr. Gibbons’s assessment of the level of ordinary skill is correct, we adopt Petitioner’s statement of the level of ordinary skill in the art with the exception of the language “at least,” which introduces ambiguity. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering or computer science (or equivalent degree or experience) with two years of experience in the design and/or development of database and record management systems.” slip op. at 8

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

    “Patent Owner’s interpretation of “measurable characteristic” is refuted by the specification of the ’371 patent, which states that aging controller 120 determines a current value of L in response to one or more measurable main memory characteristics, step 200, such as a current utilization or capacity of main memory, a trend analysis of a utilization or capacity of main memory over a time period (t), or any other applied mathematics- or statistics-based analysis, including a comparison of any of the same with a threshold, ceiling/floor, limit, set point or the like. Ex. 1101, 6:46–53 (emphases added). According to the ’371 patent, therefore, a comparison of a memory’s current utilization or capacity to a threshold is within the scope of a “measurable main memory characteristic[].” Thus, Patent Owner’s attempt to distinguish “logical events” and “qualitative assessments” from measurable characteristics of memory is contrary to the specification. We determine that the phrase “measurable characteristic of said memory” does not require further construction.4” slip op. at 10

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

    “titled Concurrency Control and Recovery in Database Systems. Petitioner asserts that “Bernstein qualifies as prior art to the claims of the ’371 patent under 35 U.S.C. § 102(b) (pre-AIA).” Pet. 7. Petitioner introduces additional evidence that the Bernstein textbook was published more than one year before the August 19, 1997, filing date of the ’371 patent. See Exs. 1106 (Bernstein textbook excerpts, including title page and date stamp (April 27, 1987) from Library of Congress), 1107 (Bernstein textbook excerpts, including stamp from the University of Michigan Libraries and date annotation (1987)). During the trial, Patent Owner did not contest the status of Bernstein as a prior art printed publication under 35 U.S.C. § 102(b). Based on the evidence of record, we determine Bernstein is a prior art printed publication under 35 U.S.C. § 102(b). 5 Patent Owner has not presented evidence of secondary considerations as to any of the challenged claims.” slip op. at 12

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

    “We disagree with Patent Owner’s premise that Bernstein does not disclose a “garbage collection” scheme for MVTO. As we discuss above, according to Patent Owner, “[i]dentifying which versions can be deleted and recovering the space associated with them” is “a concept known as ‘garbage collection.’” PO Resp. 22 (citing Ex. 2013, 50:14–25; Ex. 2014, 88:20– 89:11). Bernstein discloses deleting the oldest versions when space has run out, i.e., “garbage collection” commensurate with the scope of claim 8. Ex. 1103, 154. We are persuaded Petitioner’s articulated reasons to combine the teachings of Bernstein and Rubin have a rational underpinning, and specifically, we find a person of ordinary skill in the art would have been motivated to combine Rubin’s monitoring of disk storage space with Bernstein to proactively alert Bernstein’s data manager of impending disk space shortages rather than waiting until the data manager “run[s] out of space for storing versions.” See Ex. 1102 ¶¶ 68–70. We agree with Dr. Gibbons that maintaining “a minimal level of space, in turn, would have avoided the need to suspend the database system to perform deletion of old versions.” Id. ¶ 70.” slip op. at 28

  Patent outcomesUS 6,125,371 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,125,371

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.