- PTAB · Oct 13, 2023 · IPR2023-00704 · APJ Kristi L R Sawert · IPR · Institution
The Board instituted IPR of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Alperovitch alone renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Under the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Petitioner stipulates here that it “will not pursue in parallel district court proceedings the same grounds as in the Petition or any grounds that could have reasonably been raised in the petition.” Pet. 66; see also Reply 1 (noting that “[t]he Petition’s broader Sotera-type stipulation additionally includes ‘or any grounds that could have reasonably been raised in the petition.’” (emphasis omitted)). Thus, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of trial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” If the Board institutes trial, it “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’517 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–24) of the ’517 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Jeffay, Petitioner contends that an ordinarily skilled artisan for the ’517 patent “would have had a bachelor’s degree in computer science or computer engineering, or an equivalent field and at least two to three years of experience in computer and network security.” Pet. 3 (citing Ex. 1003 ¶ 22). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered” as having ordinary skill in the art. Id. at 3–4 (citing Ex. 1003 ¶ 22). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art” at this stage of the proceeding. Prelim. Resp. 14 (citing Pet. 3–4). Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’517 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “for the purposes of this Petition, the Board does not need to explicitly construe any claim term, and there are no known claim construction disputes that affect the outcome of this Petition.” Pet. 10. Patent Owner states that “claim construction is not required to resolve any issues.” Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Any final written decision entered in this case may include a final claim construction” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,850,517 - Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution
The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe a claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 9,231,968 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00459 · APJ James P Calve · IPR · Institution
Instituted IPR of claims 1–7 and 10–31 on all eight asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 8. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent. Our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Nonetheless, we provide the following guidance for the meaning of “fabric,” in claims 1, 15, 21, and 27 to assist the parties in the upcoming trial, and encourage the parties to address this term at the appropriate stages of the trial. At this stage of the proceeding, based on the current record, we interpret “fabric” as “a network topology such as the physical structure of a switch or network.” This is consistent with an ordinary, customary meaning. Ex. 2003, 3 (defining a “fabric” as “[a] descriptive term referring to the physical structure of a switch or network.”) (cited in Prelim. Resp. 12). This meaning is consistent with Patent Owner’s assertion that “fabric” is an “interconnected topology” in “enterprise networks.” Prelim. Resp. 10. Patent Owner’s declarant, Dr. Black, testifies that “[a]s enterprise networks became larger and larger, a complex, interconnected topology known as a ‘fabric’ was developed to handle the management of such networks.” Ex. 2001 ¶ 44 (cited in Prelim. Resp. 10). Dr. Black testifies that “a fabric of network devices (such as switches or access points for each subnetwork) was developed to manage network traffic between subnetworks, and to and from the Internet.” Id. This meaning is consistent with the ’825 patent, which describes a private network 120 topology of computers and servers coupled together by a local area network (LAN) or a wireless LAN. Ex. 1001, 5:3–9, Fig. 1. “FIG. 2 shows a topology 200 of a cooperative security fabric that consists of network security appliances of FIG. 1.” Id. at 5:50–51 (emphasis added). Root node 220 corresponds to network security appliance 121 and acts as a wide area network (WAN) role in topology 200 to connect a private network to other networks or the Internet. Id. at 5:52–56. It is the outermost network security appliance of the cooperative security fabric. Id. at 5:52–55.” slip op. at 9
- BurdenInstituted
“At this stage, based on the evidence and arguments, we conclude that Petitioner has provided sufficient evidence at this stage to establish that Chandra discloses element 1[b].” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,084,825 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00458 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 8–17, and 21–27 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 15–16. Patent Owner asserts that the positions set forth in the Preliminary Response would be the same under either parties’ proposal. Id. at 16. We adopt Petitioner’s proposal as more consistent with the prior art and the ’678 patent. Our decision would be the same under either formulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). The parties assert that the claims should be given their ordinary and customary meaning in light of the specification and no claim constructions are necessary at this time. Pet. 15; Prelim. Resp. 16. We agree that no express claim constructions are required at this time to render our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“These arguments do not address Petitioner’s contentions that a skilled artisan would have combined Shikfa’s searchable encryption mechanism with Cidon’s encryption technique that divided content into segments with a segment identifier for each chunk to enable a search for encrypted chunks to “allow Cidon’s system to search and locate files on a segment-by-segment basis” as “implemented in Herrmann’s gateway server.” Pet. 43–44 (citing Ex. 1004, Fig. 13; Ex. 1006 ¶¶ 39, 50; Ex. 1002 ¶¶ 105–107). Petitioner asserts that the modified system would have searched encrypted file content without requiring such capability at a storage provider to maintain privacy, to protect confidential information, and to allow storage on cloud storages that lack search capability. Pet. 44 (citing Ex. 1006 ¶ 50; Ex. 1002 ¶ 105). Shikfa’s searchable encryption would improve Cidon’s ability to search the content of encrypted document segments. KSR, 550 U.S. at 417 (using a technique that improved one device to improve other devices in the same way is obvious unless its application is beyond the level of ordinary skill in the art). The improvement preserves the privacy of files, locates files by segments, and allows storage on cloud providers lacking search ability. Pet. 44; see DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding that an implicit motivation exists when an “improvement” makes a product/process stronger, cheaper, faster, lighter, smaller, more durable, and/or more efficient).” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,280,678 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Aug 30, 2023 · IPR2023-00456 · APJ James P Calve · IPR · Institution
Instituted IPR on claims 1–28 on all three §103 grounds based on the Board’s finding of a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of networks and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 13 (asserting that the positions in the Preliminary Response are the same under either proposal). The two formulations are similar, differing mainly in the level of experience required. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and prior art, but our analysis would be the same under either party’s proposal.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties assert that claim terms should receive their plain and ordinary meaning, and no claim terms require construction. Pet. 16; Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable expectation of success (Prelim. Resp. 24), “[t]he reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Absolute predictability of success is not required. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Given the broad scope of natively mounted, the disclosure that AWS provides software to natively mount files (Ex. 1001, 5:23–32), and Burdett’s similar native mounting of cloud files to a scanning service (see Ex. 1004, 23:33–24:18, 25:34–55, 27:20–29:41), Petitioner has shown a reasonable expectation of success in combining Burdett and FortiSandbox to meet this limitation. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue] is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.”). Descriptions of native mounting in the ’856 patent, FortiSandbox, and Burdett indicate that native mounting can be accomplished with a reasonable expectation of success. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references.”). Regarding the motivation to combine, FortiSandbox natively mounts network shares to security devices to scan suspicious files for malware (Ex. 1005, 113–115; Pet. 18–19), and Petitioner contends that this technique would improve Burdett similarly to perform malware scans of public cloud store files via native communications while preventing users from accessing malicious files (Pet. 19, 29–30). See KSR, 550 U.S. at 417.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,036,856 - PTAB · Aug 11, 2023 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 21–30, 36, and 37 on all asserted grounds, finding a reasonable likelihood of success and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’915 patent. We also decline to exercise our discretion to deny institution under § 325(d). Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1, 21–30, 36, and 37) of the ’915 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics states that “[p]reviously presented art . . . includes art provided to the Office by an applicant, such as on an Information Disclosure” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “The motivationto-combine analysis is a flexible one.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). And “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference teaches away ‘when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken’ in the claim.” Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017). “A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” Id. On this record, we are not persuaded that this is a teaching away for several reasons. First, the combination seeks to improve the operation of Armitage by incorporating Barone’s filter, not altering Barone. Thus, it is unclear how this alleged teaching away in Barone would discourage a person of ordinary skill from modifying Armitage. Second, on this record, we understand the statement as expressing a preference, and does not rise to the level of a teaching away. Thus, we are not persuaded that Barone teaches away from the combination. Accordingly, we find, on the current record, that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine Armitage with Barone. slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,137,915 - PTAB · Aug 11, 2023 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–10, 13–18, and 20–32 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on this record, it appears that the main distinction between Petitioner’s ordinary skilled artisan and Patent Owner’s is that Patent Owner further requires familiarity with wireless networks. We note, however, that the monitoring systems of the asserted prior art include wireless networks. In view of this, because Petitioner’s requirement of experience designing railcar, train, vehicle, or any other similar monitoring systems includes some familiarity with wireless networks, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’223 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“this proceeding. Pet. 15. Patent Owner asserts that the term “housing” means “an enclosure.” Prelim. Resp. 29. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“30 of the ’223 patent are entitled to claim priority back to the ’713 application. The test for sufficiency of written description “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In particular, we do not agree with Patent Owner that it can simply pluck the temperature sensor from LeFebvre and insert it into the sensor device disclosed in the ’713 application. Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013) (“Working backward from a knowledge of [the claims], that is by hindsight,” [patentee] seeks to derive written description support from an amalgam of disclosures plucked selectively from the [prior] application.”) (first alternation in original).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,223 - PTAB · Jul 26, 2023 · IPR2023-00539 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–18 and 20–22 on all four § 103 grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“An ordinary meaning of “heuristic” is “involving or serving as an aid to learning, discovery, or problem-solving by experimental and especially trial-and-error methods.” Merriam-Webster.com at “http://www.merriam-webster.com/dictionary/heuristic” (accessed June 12, 2023) (Ex. 3001). Heuristics in the ’673 patent are (1) empirical data used to correlate sensed bearing adapter temperature to bearing temperature, (2) correlating sensed pressure in a trainline to brake pressure, (3) converting bolster/side frame displacement to load, (4) estimating a temperature of tank contents from inner jacket temperature, (5) using dynamic bearing data at an adapter with a fast Fourier transform (FFT) algorithm to isolate dominant modes, and amplify at rolling frequency to indicate faults, (6) converting radial acceleration to vehicle speed using dynamics and wheel and axle diameters, (7) using dynamic bearing data at an adapter and kurtosis in a time domain with a probability density function to indicate bearing damage, (8) applying a probability density function and kurtosis to dynamic data at a bearing adapter and other truck components to indicate track defects, (9) using a simple FFT algorithm with data from adapters to isolate known hunting frequencies or detect flange impacts to identify hunting, and (10) correlate wheel temperature to tread temperature using empirical data. Ex. 1001, 8:20–12:39 (chart of sensed parameter, sensor type, output, and heuristic). Interpreted in light of the ’673 patent specification, a “heuristic” is a rule, algorithm, function, formula, graphing function, or similar mechanism applied to data to assist in analyzing and/or interpreting the data.” slip op. at 7
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have been a person with at least a B.S. degree in electrical or mechanical engineering or a related field with at least two years’ experience designing monitoring systems for railcar components, or monitoring systems for similar industrial equipment with rotating components,” and “[l]ess work experience could be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 45). 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Changes made to 35 U.S.C. § 103 in the AIA do not apply to any application for patent filed before March 16, 2013. Because the ’673 patent has an effective filing date before March 16, 2013, we refer to the pre-AIA versions of § 103. 3 US 2007/0152107 A1, published July 5, 2007 (Ex. 1005, “LeFebvre”). 4 US 2007/0208841 A1, published Sept. 6, 2007 (Ex. 1007, “Barone”). 5 US 2011/028540 A1, published Nov. 17, 2011 (Ex. 1006, “Armitage”). Patent Owner contends that a skilled artisan “is a person with at least a B.S. degree in electrical or computer science or a related field, with at least two years’ experience with sensing systems for railcars or similar industrial equipment, including familiarity with wireless networks and heuristics and statistical data analysis for failure prediction,” and “[l]ess work experience could be compensated for by a higher level of relevant education and vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 36–40). We adopt Patent Owner’s proposed level as more consistent with the ’673 patent and prior art, but our analysis is the same under either proposal.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We apply the following two-part framework under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13, 2020) (precedential). To determine whether the Petition presents “the same or substantially the same” art or arguments previously presented to the Office, we consider the factors set forth in Becton, Dickinson.6 Id. at 7 n.8. Becton, Dickinson provides a non-exclusive set of factors to use in applying the framework of 35 U.S.C. § 325(d).” slip op. at 49
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,981,673 - Siemens Mobility, Inc. / Ground Transportation Systems USA, Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Jul 14, 2023 · IPR2023-00452 · APJ Neil T Powell · IPR · Institution
The Board denied institution for claims 1–16 because Patent Owner effectively disclaimed all challenged claims, and no inter partes review may be instituted on disclaimed claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentInstitution denied
“In view of the foregoing, we find Patent Owner’s Disclaimer effective to disclaim claims 1–16 of the ’363 patent. Given this, and given 37 C.F.R. § 42.107(e)’s provision that “[n]o inter partes review will be instituted on disclaimed claims,” we agree with Patent Owner that its disclaimer of all challenged claims of the ’363 patent precludes institution of inter partes review in this proceeding. See Prelim. Resp. 3; Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential). III. ORDER For the reasons given, it is: ORDERED that the Petition is denied as to all challenged claims of the ’363 patent and no trial is instituted.” slip op. at 8
NonePatents in suitUS 10,778,363 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitution deniedPTAB · Jul 6, 2023 · IPR2023-00460 · APJ James P Calve · IPR · Institution
The Board denied institution on all challenged claims because Patent Owner properly disclaimed claims 1–20.
RulingsInstitution decision- Adverse judgmentOther
“that complies with § 1.321(a) and disclaims one or more claims in a patent, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). A disclaimer must meet the following requirements: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. A disclaimer which is not a disclaimer of a complete claim or claims, or term will be refused recordation; (3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in § 1.20(d). 37 C.F.R. § 1.321(a).” slip op. at 6
NonePatents in suitUS 10,737,709
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.