- Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitutedPTAB · Jun 23, 2023 · IPR2023-00470 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–28 on all grounds in the petition, 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
“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 petitioner adoptedDecided for petitioner
“Although the present disclosure describes a collision avoidance system that may be applied to a work gang of railroad vehicles, the technology and the concepts described herein may be utilized in other vehicles, applications and/or industries, for example, in industries where spacing, location and status is important. Some industries that may utilize the concepts described herein are (1) the construction industry, (2) the mining industry, (3) the airport industry, specifically on airport tarmacs. Ex. 1001, 29:30–38.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Mr. Andrews’ more than twenty years of experience with wireless technologies and transportation collision avoidance systems qualifies him as more than a person of ordinary skill in the art by both parties’ definitions, and Mr. Andrews’ supervision of skilled artisans has familiarized him with their level of skill. Ex. 1003 ¶ 28. Any lack of railway experience affects the weight we may give to his testimony. As discussed below, his testimony is consistent with the asserted prior art and the ’227 patent. As claimed, the CAS technology is simple enough that expert testimony is helpful, but not essential, to our understanding of the references and issues. See Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“comprises a “Transmitter” and a “Receiver.” Ex. 1006, 16:14–17:43. “In a transceiver embodiment, substantial economy can be achieved by sharing part or all of several of the functions of the transmitter 602 and receiver 702” and shared functions include “time base 718, precision timing generator 714, code source 722, [and] antenna 704.” Id. at 17:44–48 (emphasis added). No motivation is needed to combine transmitter 602 and receiver 702 to form a transceiver because Grisham teaches a transceiver embodiment as Petitioner asserts. Ex. 1006, 16:14–48, Figs. 6, 7; Pet. 12 (citing Ex. 1006, 17:44–46; Ex. 1003 ¶ 109 (same). Figure 21 mounts transmitting impulse radio unit 902 and receiving impulse radio unit 904 on each locomotive 1102, 2102 to function as transceivers that send and receive radio signals. See Ex. 1006, 23:33–24:29, 16:14–17:48.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,812,227 - Siemens Mobility, Inc. / Ground Transportation Systems USA Inc. et al. v. Metrom Rail, LLCInstitutedPTAB · Jun 23, 2023 · IPR2023-00468 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 petitioner adoptedDecided for petitioner
“This disclosure indicates the ’131 patent’s CAS technologies can be used with other vehicles and systems. This technology uses UWB and GPS sensors to determine vehicle location, speed, and separation distance for collision avoidance as discussed above. Ex. 1001, 3:31–4:60, 6:4–8:13.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“As discussed above, the ’131 patent itself indicates that its collision avoidance system, which is configured for trains and hyrail vehicles, can be applied in other industries, vehicles, and applications to control vehicles. Ex. 1001, 29:33–41 (mining, construction, airports). This disclosure is consistent with the prior art’s use of such technologies for trains, vehicles, trucks, planes, boats, ships, snowmobiles, and ATVs. Ex. 1016, 6; Ex. 1001, 3:46–63, Figs. 1C (hyrail vehicle), 2 (vehicle 204); Ex. 1005 ¶¶ 2–9, 55–59; Ex. 1006, 18:53–24:28, Figs. 9–22; Ex. 1008, Abstract, 209–213, Figs. 1–7. Mr. Andrews’ more than twenty years of experience with wireless technologies and transportation collision avoidance systems qualifies him as more than a person of ordinary skill in the art under both parties’ definitions, and Mr. Andrews’ supervision of skilled artisans has familiarized him with their level of skill. Ex. 1003 ¶ 28. Any lack of railway experience affects the weight we may give to his testimony. As discussed below, his testimony is consistent with the asserted prior art and the ’131 patent. As claimed, the CAS technology is simple enough that expert testimony is helpful, but not essential, to our understanding of the references and issues. See Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Grisham describes an “Exemplary Transceiver Implementation” that comprises a “Transmitter” and a “Receiver.” Ex. 1006, 16:14–17:43. “In a transceiver embodiment, substantial economy can be achieved by sharing part or all of several of the functions of the transmitter 602 and receiver 702” and shared functions include “time base 718, precision timing generator 714, code source 722, [and] antenna 704.” Id. at 17:44–48 (emphasis added). No motivation is needed to combine transmitter 602 and receiver 702 to form a transceiver because Grisham teaches a transceiver embodiment as Petitioner asserts. See Ex. 1006, 16:14–17:48; Pet. 12–13 (citing Ex. 1006, 17:44–46; Ex. 1003 ¶ 108 (citing Ex. 1006, 17:44–48). Figure 21 mounts transmitting impulse radio unit 902 and receiving impulse radio unit 904 on each locomotive 1102, 2102 to function as transceivers that send and receive radio signals. See Ex. 1006, 23:33–24:29, 16:14–17:48. Grisham describes mounting transmitting impulse radio unit 902 on locomotive 1102 to transmit impulse radio signal 910 to receiving impulse radio unit 904 on locomotive 2102 (Ex. 1006, 23:33–63) and states that “[i]t should be understood that the first locomotive 1102 can contain the same equipment as the second locomotive 2102 . . . and as such could be notified of the presence and speed of an oncoming second locomotive 2102” (id. at 24:24–29). Each locomotive 1102, 2102 has transmitting and receiving impulse radio units that function as transceivers to send and receive data as impulse radio signals 910 to notify operators on each locomotive of the presence and speed of the other locomotive to achieve substantial economy.” slip op. at 17
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,043,131 - Apple Inc. v. R.N Nehushtan Trust Ltd.Institution deniedPTAB · Jun 14, 2023 · IPR2023-00231 · APJ Brent M Dougal · IPR · Institution
The Board denied institution on all claims because Apple did not show a reasonable likelihood of prevailing on any obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“Petitioner does not identify a level of skill for a person of ordinary skill in the art. See generally Pet. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had at least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least one year of experience in wireless communication systems. Superior education could compensate for a deficiency in work experience, and vice-versa. Ex. 1003 ¶ 20. Patent Owner accepts this level of skill at this stage. Prelim. Resp. 6.” slip op. at 6
- BurdenNot shown unpatentable
“As correctly noted by Patent Owner, the Petition does not include any parenthetical discussions, or clarifying statements concerning the Shahbazi Provisional. Prelim. Resp. 12 (“The only potential support in the Petition is unexplained citations to the Shahbazi Provisional throughout the Ground 1 argument section”). Patent Owner argues that some of these citations are to as many as nine pages of the Shahbazi Provisional, again without any explanation. Id. at 13 (citing e.g., Pet. 16, 17, 23, 33, 34). We agree with Patent Owner that Petitioner has not satisfied its burden to show support for its positions with regard to the Shahbazi Provisional. By providing no discussion of the Shahbazi Provisional, the Petition essentially requires Patent Owner and the Board to guess which teachings in the Shahbazi Provisional the Petition is relying on. This does not satisfy our rules that require the Petition to “state the relevance of the evidence to the issues raised” and “identify how the . . . claim is unpatentable over the relevant evidence.” See Consolidated Trial Practice Guide6 at 42 (citing 37 C.F.R. § 42.104); see also 84 Fed. Reg. 64,280 (Nov. 21, 2019).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As will be discussed below, the Petition fails to address the claimed requirement that the data mode allows changing of settings comprising personal data. Rather, the Petition argues that Fam teaches a data mode including the changing of settings generally, but then only argues that the memory includes personal data, which are settings. The Petition does not argue that the references teach that the personal data is changeable in the data mode as required by the claim. The Petition relies on Fam for teaching an operational mode that allows reading and writing of data and changing of settings on a mobile phone, including Fam’s Figure 1, reproduced below. Pet. 54–56. Fam’s Figure 1 shows computer system 10 for programming a mobile phone 30, where the computer system is connected to the mobile phone over cable 24. Ex. 1005, 2:64–65, 3:3–6. Petitioner argues that when the programming mode that reads on the claimed data mode. Pet. 55. Petitioner further argues that “[t]he programming mode involves ‘allowing reading and writing of data’ into memory 34 since, upon completion of the programming mode, the mobile phone 30 becomes operational and/or functional.” Id. Fam teaches that when the computer and mobile phone are connected, the computer can program the mobile phone with configuration information 20 (22 on the mobile phone) that includes “operating data and parameters required for the mobile phone [ ] to function such as mobile phone operating software, network information, service provider information, hardware settings, and other similar information for supporting a wide variety of mobile phones.” Ex. 1005, 3:8–29. Turning to the claimed “data mode allowing . . . changing of settings” slip op. at 16
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,642,002 - Apple Inc. v. R.N Nehushtan Trust Ltd.Institution deniedPTAB · Jun 14, 2023 · IPR2023-00230 · APJ Brent M Dougal · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that any challenged claim was unpatentable over Shahbazi or Fam, Geiger, and Shirai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
- Skill levelSkill level board ownDecided for patent owner
“Petitioner does not identify a level of skill for a person of ordinary skill in the art. See generally Pet. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had at least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least one year of experience in wireless communication systems. Superior education could compensate for a deficiency in work experience, and vice-versa. Ex. 1003 ¶ 20. Patent Owner accepts this level of skill at this stage. Prelim. Resp. 6.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require express construction. Pet. 5–6. Patent Owner does not propose any claim constructions, but argues that Petitioner’s arguments assume various claim constructions. PO Resp. 7–8. We determine that no terms need to be construed at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- BurdenNot shown unpatentable
“In order for Shahbazi to be entitled to the filing date of the Shahbazi Provisional, Petitioner is required to show written description support in the Shahbazi Provisional for the invention disclosed in Shahbazi. In re Wertheim, 646 F.2d 527, 537 (CCPA 1981); see also Dynamic Drinkware, 2 Shahbazi was filed on December 22, 2004. Ex. 1004, code (22). 3 The ’544 patent claims priority to a provisional application filed March 8, 2004 and is a continuation in a line of other continuations, where the earliest application was filed May 6, 2004. Ex. 1001, codes (60), (63). Thus, based on the chain of priority, Shahbazi itself is not prior art to the ’544 patent unless Shahbazi is entitled to the benefit of its provisional. Whether or not the ’544 patent is entitled to its claim of priority to its provisional does not impact this analysis. (2015) (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with [35 U.S.C.] § 112, ¶ 1.”).4 In addition, Shahbazi only receives the benefit of the earlier priority date of the Shahbazi Provisional for that which is disclosed in the Shahbazi Provisional. See 35 U.S.C. § 119(e) (An application for patent is entitled to the filing date of a provisional application for the invention disclosed in the provisional application); see also Prelim. Resp. 11–12. In other words, Petitioner also needs to show that the portions of Shahbazi relied on as teaching aspects of the ’544 patent claims find support in the Shahbazi Provisional.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,635,544 - Siemens Mobility, Inc., Ground Transportation Systems USA, Inc., Humatics Corp., And Piper Networks, Inc. v. Metrom Rail, LLCInstitution deniedPTAB · Jun 13, 2023 · IPR2023-00439 · APJ Neil T Powell · IPR · Institution
The Board denied institution for all challenged claims because Patent Owner statutorily disclaimed claims 1–30.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.” Thus, we shall not institute an inter partes review in this proceeding if Patent Owner has met the requirements of Rule 1.321(a) and disclaimed all challenged claims of the ’595 patent. Consistent with Patent Owner’s assertion, Office records reflect that Patent Owner filed its Disclaimer on April 18, 2023. Additionally, Patent Owner’s Disclaimer complies with Rule 1.321(a). Patent Owner’s Disclaimer is signed by “James Marchi, Chief Executive Officer” of “Metrom Rail, LLC.” Discl. 1. This meets Rule 1.321(a)(1)’s requirement that a disclaimer “[b]e signed by the patentee, or an attorney or agent of record.” Identifying the patent number as “10,179,595,” Patent Owner’s Disclaimer states “I hereby disclaim . . . complete claims . . . 1-30.” Discl. 1. This meets Rule 1.321(a)(2)’s requirement that a disclaimer “[i]dentify the patent and complete claim or claims, or term being disclaimed.” Patent Owner’s Disclaimer also states that “[t]he extent of my interest in said patent is . . . 100% Patent Owner (Reel 047644/Frame” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“Additionally, by disclaiming claims 1–30 of the ’595 patent, Patent Owner does disclaim all challenged claims of the ’595 patent. Accordingly, we cannot institute an inter partes review of the ’595 patent. See 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 ’595 patent and no trial is instituted.” slip op. at 6
NonePatents in suitUS 10,179,595 - PTAB · May 18, 2023 · IPR2023-00192 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–9: claims 1 and 6 on anticipation by Weth, and claims 2–5 and 7–9 as obvious over Weth and Weber.
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 1 of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- 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) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“least a Ph.D. or M.D. with a background in circadian biology, neuroscience, physiology, and phototherapy, or at least 5 years of professional experience in one or more of those fields. Pet. 14–15 (citing Ex. 1005 ¶¶ 38–41). Patent Owner does not propose a level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed standard. Based on the preliminary record, this level of ordinary skill appears to be consistent with the ’140 patent, the prior art of record, and Dr. Heller’s testimony. Ex. 1005 ¶¶ 38– 41.” slip op. at 6
- Expert testimonyPetitioner expert creditedOther
“Petitioner’s contentions are supported by Dr. Heller’s opinions and are consistent with other record evidence. Weth’s sunlight spectra gives “a full spectrum effect” that is important to the eyes and clinical effect. Ex. 1004, 18:16–32; id. at 7:31–38 (significantly improved clinical findings via eyes). The lamp’s carrier gases emit a broad light spectrum for clinical effect. Id. at 18:14–19. Each spectral line in Weth’s pre-defined UV and visible light sunlight spectrum corresponds to an absorption line of endogenous, essential substances of a patient. Ex. 1004, 1:32–2:17, 3:13–4:12. Improved receptor sensitivity results from this pre-defined spectrum leading to improved sleep quality and increased vigilance. Id. at 12:30–37; Pet. 15–16, 26. Because the sunlight spectrum includes a spectral line of 438 nm that falls in the claimed peak range of 435–488 nm, it is maximally potent. Pet. 9–10, 27; In re Best, 562 F.2d 1252 (CCPA 1977) (“[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.”); Ex. 1023, 668–669.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,678,140 - Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · May 15, 2023 · IPR2023-00175 · APJ James P Calve · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” 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 of the ’601 patent. We therefore do not institute an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In contrast to a fence-and-gate perimeter, a virtual perimeter globally distributes P/PoPs as perimeter points of presence for distributed computer platforms in different locations. Ex. 1001, 4:19–33, 5:33–53, Fig. 1. P/PoPs can be distributed geographically across buildings, cities, regions, countries, and continents to connect virtually or physically with computer platforms, computing nodes, and access end-points of different entities in different areas to provide a customized virtual perimeter. Id. at 5:43–9:48, Fig. 1.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[I]n appropriate circumstances, a patent can be obvious in light of a single prior art reference if it would have been obvious to modify that reference to arrive at the patented invention.” Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). Yet, comparing Hudis’ perimeter of actual POPs 3051–N that are positioned at access points of computing nodes 125, 132, 135, 221 232, 235 to a fence-and-gate perimeter in the’601 patent is insufficient to explain adequately why a person of ordinary skill in the art would have modified Hudis to achieve a virtual perimeter (Pet. 21–22; Ex. 1002 ¶¶ 70–72), particularly when the ’601 patent distinguishes a prior art fence-and-gate perimeter as different from, and inferior to, such a virtual perimeter (see Ex. 1001, 1:17–4:39; 5:33–10:62, Figs. 1–3B). Nor has Petitioner shown sufficiently that Hudis provides motivation such that a skilled artisan “would have found it obvious that Hudis’ POPs provided a virtual perimeter.” Pet. 22. Instead, Hudis touts the benefits of co-locating actual POPs at access points for nodes “to provide a degree of optimization of network operations, to minimize latency . . . while also providing for appropriate localization of the user experience.” Ex. 1004, 6:48–55. Hudis must use two or more POPs 305 to cover an area that is too large for a single POP to provide satisfactory network performance or localization. Id. at 6:64–67. Hudis warns that locating a POP away from an access point increases network latency and reduces the localization of users’ experiences. Id. at 7:1–5. Hudis even defines the required “co-location” as “a given POP is close enough to the user to provide a degree of optimization of network operations [and] minimize latency.” Id. at 6:51–53. slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“The parties appear to agree that Hudis forms a perimeter with POPs located physically at user nodes and access points 3121–N where computing nodes and users connect to global SCM service 105 via Internet 109 and where an entity’s control over its networking infrastructure ceases to exist. See Pet. 21–22; Prelim. Resp. 18–22; Ex. 1004, 6:41–7:26, Fig. 3. Locating actual POPs at nodes and access points to SCM service 105 does not form a “virtual perimeter” as we construe that limitation. Indeed, Petitioner’s comparison of Hudis to a fence-and-gate perimeter described in the ’601 patent’s discussion of known perimeters indicates that Hudis does not disclose a “virtual perimeter.” Such contentions do not address the term “virtual.” See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (explaining that reading limitations out of a claim is “contrary to the principle that claim language should not be treated as meaningless”). Petitioner’s assertion that Hudis’ fence-and-gate perimeter of actual POPs co-located at ingress/egress points of a network is a virtual perimeter contradicts the ’601 patent’s description of a “virtual perimeter” as using P/PoPs to provide “virtual instances” of access points and perimeters around computing nodes even though the P/PoPs are located away from nodes 121– 124, 131–134 of different entities. Pet. 21–22; Ex. 1001, 5:33–9:48, Fig. 1. Petitioner’s assertion that Hudis’ SCM service is similar to a prior art fence-and-gate perimeter described in the ’601 patent shows that Hudis does not disclose a virtual perimeter, because the ’601 patent distinguishes a prior art fence-and-gate perimeter from a virtual perimeter. Pet. 15, 21; Ex. 1001, 1:17–4:39.” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,197,601 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Apr 27, 2023 · IPR2023-00030 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all twelve asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 1 of the challenged claims. We therefore grant institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant work or research experience also suffice. See also Prelim. Resp. 13 (asserting that the positions set forth in the Preliminary Response would be the same under either of the parties’ proposals). Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’941 patent. See, e.g., Ex. 1001, 1:14–3:51.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The ’941 patent claims and specification indicate that endpoint-to- endpoint connections are “within the enterprise network,” that is, between computing devices in the enterprise network. Ex. 1001, 1:66–2:17, 2:58– 3:10, 25:8–10, 26:7–9; Prelim. Resp. 17 n. 5. Petitioner asserts that Wang controls endpoint-to-endpoint connections by implementing a firewall policy that subnet 206 and its computing systems should not access computing resources of subnet 204. Pet. 27 (citing Ex. 1003 ¶ 21). Dr. Lee testifies that a skilled artisan would have understood or found it obvious that Wang’s firewall policy controlled traffic between subnets and between computing endpoints within those subnets. Ex. 1002 ¶ 69 (cited in Pet. 27–28). The claims recite “controlling endpoint to endpoint connections within the enterprise network according to the set of security policies” but do not claim how the endpoint-to-endpoint connections are controlled.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“C. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103 if differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding an implicit motivation to combine exists not only when a suggestion can be gleaned from the prior art as a whole, but also when the “improvement” is technology-independent and the combination of references results in a product or process that is desirable because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Neither party presents any objective evidence of non-obviousness.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,826,941 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Apr 26, 2023 · IPR2022-01587 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–8 and 11–18 on all eight asserted obviousness grounds.
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 inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant experience also suffice. Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’282 patent. See, e.g., Ex. 1001, 1:32–2:24.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Mohapatra’s testimony evidences skilled artisans would have had a reasonable expectation of success in combining Nagayama and Crawford. Dr. Mohapatra testifies that Nagayama and Crawford describe improved content filtering systems for data transferred to an open network, and their overlapping objectives and technologies could complement one another to improve content filtering. Ex. 1002 ¶ 95. Dr. Mohapatra also testifies that Nagayama’s system “could be improved by including content-based filtering on a network service into a single policy” to expand the scope of the filtering rules to include parameters in a single filter rule. Id. ¶ 96. Dr. Mohapatra also testifies that Nagayama and Crawford filter network traffic for network services. Id. ¶¶ 119–125. Dr. Mohapatra testifies that skilled artisans know how to filter data at gateways for network services, watermarks, and other data using port numbers and packets. Id. ¶¶ 49, 54–61, 64–66, 70–73, 120. Petitioner cites Dr. Mohapatra’s testimony to support its contentions that skilled artisans could have combined Nagayama and Crawford with a reasonable expectation of success. Pet. 22–23 (citing Ex. 1002 ¶¶ 94–97), 35–37 (citing Ex. 1002 ¶¶ 119–122), 8–11 (citing Ex. 1002 ¶¶ 47–73). Patent Owner’s declarant, Dr. Black, testifies a skilled artisan would not have had a reasonable expectation of success in modifying Nagayama’s network security device (filtering means 60) to filter network traffic for network services and apply filter rules that are active for a network service due to the complexity of firewall systems and myriad design challenges. Ex. 2001 ¶ 45. We do not find this testimony persuasive at least because claims 1 and 11 do not claim a firewall of any particular configuration, much less one with any of the complex features and functions that Dr. Black discusses in his testimony.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that no claim construction is needed except for the term “watermark.” Pet. 16. Petitioner asserts, “a watermark must include “(1) information indicative of one or more of a source, origin, owner, author of a document or a file, or a company identifier, and (2) a sensitivity level.” Id. at 17. Patent Owner does not dispute this construction but instead contends that the term need not be construed because it does not impact any pending dispute between the parties. See Prelim. Resp. 13. We do not rely on Petitioner’s proposed definition of watermark because an interpretation of this limitation is not necessary for resolving the parties’ dispute in this proceeding.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,237,282 - PTAB · Mar 9, 2023 · IPR2023-00027 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1, 3–18, 21, and 22 on all petition grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.”). 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 inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“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, 8 (Feb. 13, 2020) (precedential).” slip op. at 29
- Other 314aDenied
“O. Discretionary Denial under 35 U.S.C. § 314(a) In view of Petitioner’s showing of a reasonable likelihood that at least one claim in each of Grounds 1–5 is unpatentable, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution based on Petitioner’s alleged improper incorporation by reference of Mr. Crane’s declaration, in Grounds 6–1010, to establish Pascal’s entitlement to priority of Provisional application No. 61/780,874. Prelim. Resp. 24–27, 49–50. Petitioner has provided evidence of priority. Pet. 57–58.” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a communication preference of the particular casino management system based on an identity of the user.” Ex. 1002, 2:1–4, 2:57–59. User loyalty credit information is communicated between an online gaming service server and machines providing a particular casino management system “according to the communication preference of the particular casino management system.” Id. at 2:5–10, 2:61–66. We interpret this limitation to mean a communication preference of the casino where the user’s second account is maintained and to which loyalty credit information is transmitted. The plain language of both claims indicates that the communication preference belongs to the particular casino where the user has an account for storing loyalty credits. The user’s identity determines the “particular casino management system” where the user has a second account for storing loyalty credits. Loyalty credit information is communicated for that user between that user’s first account with the online gaming service (web-based gaming service in claim 18) and that same user’s second account with “the particular casino management system” “according to the communication preference of the particular casino management system” where that user’s second account is located. Id. at 2:5–24, 2:64–3:11. This meaning matches the ’296 patent specification’s description that PIMS 116 may generate requests to be sent to a particular CMS associated with a particular user. For example, applications 114 may request that PIMS 116 retrieve patron account information, access loyalty credits, or perform other actions with respect to CMS 150. PIMS 116 may receive the abstract request from application 114, determine the communication preference of the particular CMS associated with the user associated with the request, and instruct web server 130 to submit a request to the CMS associated with the user of the web service. slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,821,296
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.