• 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
• 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
• Ericsson Inc. v. Koninklijke KPN N.V.Some claims unpatentable
  PTAB · Oct 4, 2023 · IPR2022-00557 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1, 10–12, 21, 22, 24, and 25 are unpatentable as obvious; claims 2, 3, 6, and 8 were not shown unpatentable; the contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person of ordinary skill in the art at the time of the invention “would be a person with a B.S. degree in electrical engineering, computer engineering, or equivalent training or job experience, with two years of experience in computer networking technology, or a Master’s degree in electrical engineering, computer engineering, or other equivalent degree.” Pet. 13 (citing Ex. 1003 ¶ 47). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. PO Resp. 14. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7

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

    “associated sessions” With respect to the limitation “associated sessions,” Patent Owner asserted that the ’669 Patent defines those sessions as those that “should not be managed independent from each another,” and continues to assert the same in its Response. PO Resp. 14–15 (quoting Ex. 1001, 7:37–38). Based on the recitations of the Specification, we construe “associated sessions” as “sessions that should not be managed independent from each other,” as proffered by Patent Owner. Ex. 1001, 7:37–38. slip op. at 8

  • Prior constructionTerm construed board ownDecided for petitioner

    “Patent Owner asserts that the United States District Court for the Eastern District of Texas rejected Petitioner’s proposed construction in the District Court Case, and following briefing and oral argument in that proceeding, the District Court concluded that “composition session” means “a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions.” PO Resp. 16. Having reviewed the District Court’s determination, we do not discern a significant difference in scope between it and Petitioner’s formulation, and we, thus, adopt its construction of “composition session” in the analysis below.” slip op. at 9

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

    “As such, we continue to determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success in achieving that combination, as we determined in the Institution Decision. See Inst. Dec. 17–18. We continue to be persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, we determine that the motivation proffered by the Petition is sufficient to support the combination, under the preponderance of the evidence standard.” slip op. at 16

  Patent outcomesUS 9,667,669 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,667,669
• 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
• Forescout Technologies, Inc. v. Fortinet, Inc.Some claims unpatentable
  PTAB · Jan 25, 2023 · IPR2021-01329 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 15, and 16 are unpatentable as obvious over Mahaffey; the other challenged claims were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that Petitioner’s definition is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our decision, we adopt Petitioner’s proposal on the level of ordinary skill.” slip op. at 7

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

    “We find that the specification, therefore, supports Patent Owner’s argument that the term “web content filtering” differs from “web filtering”” slip op. at 10

  • BurdenDecided for patent owner

    “particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring IPR petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)) (emphasis added). This burden does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an IPR). By not providing a claim construction for a key term, “web content filtering,” Petitioner failed to live up to its obligation to provide an understandable explanation of the element-by-element specifics of the unpatentability challenges, including the particular portions of prior art supporting those challenges. See 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(3)– (4); Harmonic Inc., 815 F.3d at 1363–64; Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intel. Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)); see also MModal LLC v. Nuance Communicatons, Inc., 846 Fed. Appx. 900, 906 (Fed. Cir. 2021) (non-precedential).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by these belated arguments, as they are based entirely on testimony by Dr. Cole as to what a person of ordinary skill “would understand” that is unsupported by any citations to Syvanne or other evidence of record. Such unsupported opinions are not entitled to any weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Consolidated Trial Practice Guide 35 (November 2019)8 (“The Board has broad discretion to assign weight to be accorded expert testimony. . . . However, the testimony must be based on sufficient facts and data.”); Fed. R. Evid. 702(b). “[E]xpert testimony cannot take the place of disclosure from patents or printed publications. In other words, 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. substitute for disclosure in a prior art reference itself.” Consolidated Practice Guide at 36.” slip op. at 26

  Patent outcomesUS 9,894,034 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,894,034
• Unified Patents, LLC v. Justservice.Net LLCSome claims unpatentable
  PTAB · Feb 16, 2022 · IPR2020-01258 · APJ Christopher G Paulraj · IPR · Final written decision

  Claims 1–6, 8, 10, 13–16, 19, and 20 are unpatentable as obvious; claims 11, 12, 17, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “We declined to decide whether Dropbox should have been named an RPI in the Petition in the Institution Decision. Inst. Dec. 2–4. Patent Owner did not raise the RPI issue in its post-institution Response. We agree with Petitioner that Patent Owner has thus forfeited any RPI arguments. Reply at 24 (citing Unified Patents, LLC v. Mobility Workx, LLC, IPR2018- 00150, Paper 26 at 3 (PTAB Dec. 2, 2019) (RPI arguments waived if not in Response)). Therefore, we need not address this issue further.” slip op. at 3

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Institution Decision, we adopted Patent Owner’s definition as being consistent with the level of skill in the art reflected by the prior art. Dec. 10–11; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State 6 Patent Owner also submitted a supplemental declaration by Dr. Brogioli (Ex. 2031) with its Sur-Reply. We expunged that document from the record along with certain other exhibits (Exs. 2023–2030) as untimely presented under 37 C.F.R § 42.23(b). Paper 37. Therefore, we do not take those documents into consideration for our analysis in this Decision. Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We continue to apply that same definition for our analysis in this Final Written Decision. We note, however, that there does not appear to be a significant difference between the parties’ respective definitions, so our analysis would not substantially differ under Petitioner’s definition.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Additionally, we are not persuaded by Patent Owner’s argument that Walker is not enabled, or that a POSITA would not have a reasonable expectation of success in combining Prust with Walker, because those arguments focus on features not required by the challenged claims of the ’868 patent. See Raytheon Tech. Corp. v. General Electric Co., 993 F.3d 1374) (Fed. Cir. 2021) (“In general, a prior art reference asserted under § 103 does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry.”). Dr. Brogioli acknowledged that he never even analyzed whether the features of Walker that he argues are not enabling are required in the claims of the ’868 patent. Ex. 1032, 84:1-85:22 (testifying that he did not recall performing an analysis about whether the claims of the ’868 patent required allowing users to edit different parts of the same file at the same time, user collaboration, concurrency among user actions and editing, or locking a document). Moreover, other than pointing to the allegedly deficient teachings of Walker itself, Dr. Brogioli cites to no evidence of record in support of his testimony that a POSITA would not have a reasonable expectation of success in implementing Walker. See Ex. 2022 ¶¶ 66–74. But Walker itself is presumed to be enabling for what it teaches. See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“[A] prior art printed publication . . . is presumptively enabling barring any showing to the contrary by [the] patentee.”). Rather than the unsupported testimony of Dr. Brogioli, we credit the testimony of Dr. Long, which is corroborated by other prior art, that the concepts disclosed in Walker, such as indicating that downloaded files are currently locked and unavailable to other users and multi-user editing, would have been familiar to programming students before 2005, and a POSITA would have been able to apply these well-known techniques with a reasonable expectation of success. Ex. 1008 ¶¶ 36–40, 67 (citing Ex. 1011–1017); Ex. 1033 ¶¶ 4–5.” slip op. at 39

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

    “we are not persuaded by Patent Owner’s claim construction position that the claims require the virtual server to transmit information about files locally stored on the client device (in addition to virtual server files) as part of the fourth claim element. With regard to the claim language, we agree with Patent Owner that “the one or more files associated with the particular user storage account” recited in the fifth claim element finds antecedent basis in the prior recitation of “information relating to one or more files associated with the particular user storage account” in the fourth claim element. By its plain language, what this means is that at least some of the “information” that is transmitted from the virtual server under the fourth element must be related to the “userselected file” that is subsequently uploaded from the client device under the fifth element. Cf. Yamaha Corp. v. ESS Tech., Inc., 82 F.3d 435, 1996 WL 146499, *3 (Fed. Cir. 1996) (“By using a definite article ‘the’ to describe ‘output’ in the last phrase, Yamaha raises the inference that the term refers to the same value as in the first step.”). Thus, contrary to Petitioner’s arguments, we are not of the view that files referenced in the fourth and fifth elements are completely “distinct.” But this does not necessarily imply, as Patent Owner suggests, that the virtual server must already be in possession of information relating to locally stored files at the point of the transmitting step of the fourth element and prior to the uploading step of the fifth element. Indeed, there is nothing recited in the claims to suggest how the virtual server would come to know about files stored on the client device.” slip op. at 16

  Patent outcomesUS 10,476,868 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 10,476,868

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.