- Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. 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, ordinary skill in the art for purposes of this Decision.” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelMixed
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26
Patent outcomesUS 10,681,009 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,681,009 - PTAB · Oct 11, 2024 · IPR2024-00772 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, found the merits threshold met, and granted Texas Instruments’ motion to join IPR2024-00001.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent appear to contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support Petitioner’s argument tthat a graded dopant concentration is enough to teach aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. Id. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). Id. At this stage of the proceeding, the evidence of record supports Petitioner’s position sufficiently to meet the reasonable likelihood threshold for institution. We decline to make further determinations, on this preliminary record, regarding the dispute surrounding this limitation, because the trial in the 00001IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 10 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. 00001IPR affords the parties a better opportunity to fully and fairly brief, argue, and develop evidence in support of their positions. We observe, on this record, the dispute is inadequate to undermine the sufficiency of Petitioner’s evidence to support institution of review.” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because applications from which the ’481 patent claims priority were filed before this date, the pre-AIA version of § 103 applies. 2 U.S. Patent No. 6,043,114, issued Mar. 28, 2000 (Ex. 1007, “Kawagoe”). 3 U.S. Patent No. 6,163,877, issued Dec. 19, 2000 (Ex. 1014, “Gupta”). 4 U.S. Patent Publication No. 2003/0183856 A1, published Oct. 2, 2003 (Ex. 1006, “Wieczorek”). 5 Petitioner cites four volumes for Wolf: Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 1 – Process Technology, 2nd ed., (Lattice Press 2000) (Ex. 1008A); Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 2 – Process Integration, (Lattice Press 2000) (Ex. 1008B); Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 3 – The Submicron MOSFET, (Lattice Press 2000) (Ex. 1008C); and Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 4 – Deep-Submicron Process Technology, (Lattice Press 2000) (Ex. 1008D). petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 14– 35. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted 00001IPR proceeding, which we grant as further discussed below, Patent Owner’s argument that the Petition is timebarred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, having reviewed the briefings of both parties, we determine Petitioner has established good cause for joining the 00001IPR. Specifically, we find that joining Petitioner to the 00001IPR is unlikely to require any delay or modification to the scheduling order already in place for the 00001IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 00001IPR.” slip op. at 19
NonePatents in suitUS 10,734,481 - PTAB · Oct 11, 2024 · IPR2024-00774 · APJ Jon B Tornquist · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IPR. Compare id., with IPR2024-00019, Paper 46 at 1–4, 6–22 (Patent Owner’s response in the Cirrus IPR) (public version). We decline to resolve the material issue of fact surrounding this limitation on this preliminary record, because the trial in the Cirrus IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the Cirrus IPR affords the parties a better opportunity to fully and fairly brief, argue, and develop evidence in support of their positions, and, in particular, to address Cirrus Logic’s alleged admission that the existence of a gradient alone is insufficient to disclose the “aid carrier movement” limitations of independent claims 1 and 21. We observe only that, on this record, the disputed issue of material fact is not sufficient to undermine the sufficiency of Petitioner’s evidence supporting institution of review.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 15– 35. The one-year time bar under § 315(b), however, “shall not apply to a request for joinder under subsection (c).” 35 U.S.C. § 315(b); see 37 C.F.R. § 42.122(b). And, because the Petition is accompanied by a timely request for joinder (Paper 1) to the instituted proceeding (IPR2024-00019), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, we determine Petitioner has established good cause for joining the Cirrus IPR. Specifically, we find that joining Petitioner to the Cirrus IPR is unlikely to require any delay or modification to the scheduling order already in place for that proceeding. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). Accordingly, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the Cirrus IPR.” slip op. at 19
NonePatents in suitUS 11,316,014 - PTAB · Oct 11, 2024 · IPR2024-00773 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted review of claims 7–12 on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b)” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for 7 Available at https://www.uspto.gov/TralPracticeGuideConsolidated. the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Regarding the “first static unidirectional electric drift field to aid the movement of minority carriers” limitation, Petitioner relies on the parent file history and cited references, arguing that “Payne’s downward-sloping graded-dopant concentration aids the movement of minority carriers from the surface layer to the substrate to the same extent to which Applicant relied on the prior art and admitted to the Patent Office that such carrier movement would occur under the same scenario.” Pet. 23. Petitioner also asserts that the direction in which carriers are forced with the concentration profile disclosed in Payne is downward, toward the substrate and away from the surface. Pet. 23–28 (quoting and citing Ex. 1046, 237–238, 253–254, 289– 290; citing Ex. 1003 ¶¶ 95–106; Ex. 1005, 5:7–17, 5:44–55; Ex. 1009, 2:11– 16, 2:67–3:18, Fig. 2; Ex. 1010, 2:27–32, 5:14–22; Ex. 1013, 431; Ex. 1030, 24). We find that Petitioner’s challenge to claim 7 based on Payne is sufficiently supported for purposes of institution.” slip op. at 12
§ 103 obviousnessPatents in suitUS 9,190,502 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195 - Nearmap US, Inc. v. Pictometry International Corp.Institution deniedPTAB · Oct 10, 2024 · IPR2024-00729 · APJ Russell E Cass · IPR · Institution
The Board denied institution on all grounds because the Petition did not sufficiently explain how the asserted references teach claim 1’s control data limitation or establish unpatentability of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The question before us is not whether we could come up with a way to understand how the asserted prior art could render the challenged claims unpatentable, but rather did Petitioner provide the arguments and evidence to show that the challenged claims are unpatentable. Here, Petitioner has not met that burden and as such, Petitioner has not shown by a reasonable likelihood that any of the challenged claims are unpatentable.” slip op. at 22
- BurdenDenied
“contentions with sufficient particularity. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”). We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the Petition fails to sufficiently explain how the combination of Loewen and Fujimoto teaches the “control data” in Petitioner’s proposed construction. Neither Petitioner’s claim chart for limitation [1.f] nor the other portions of the Petition identified in Petitioner’s Reply identify what disclosure in Loewen or Fujimoto corresponds to this “control data,” or why this “control data” would be inherent in the disclosures of those references. Additionally, as discussed above, to the extent Petitioner is relying on Dr. Forsyth’s Declaration to provide argument not set forth in the Petition, such reliance would be an improper incorporation by reference. And, in any event, Dr. Forsyth also does not identify with specificity what disclosures of Loewen or Fujimoto correspond to the “control data” in Petitioner’s proposed construction. Finally, Petitioner’s Reply does not explain how Loewen’s disclosure that the computer “triggers” the still cameras to capture images involves “control data,” or why one of ordinary skill would understand that “control data” is necessarily sent as part of this “triggering.” Consequently, we determine that Petitioner has failed to sufficiently show that the combination of Loewen and Fujimoto teaches element [1.f], and thus has failed to establish a reasonable likelihood that claim 1 is unpatentable over this combination. Because Petitioner’s other grounds are all directed to claims that depend from claim 1, Petitioner has failed to sufficiently show unpatentability of those claims as well.” slip op. at 25
§ 103 obviousnesscites KSRPatents in suitUS 9,182,657 - Nearmap US, Inc. v. Eagle View TechnologiesInstitution deniedPTAB · Oct 9, 2024 · IPR2024-00716 · APJ Stacey G White · IPR · Institution
The Board denied institution because the Petition did not explain with particularity how the cited references taught the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “a bachelor’s degree or higher in computer science, computer engineering, or an equivalent educational background, or at least five years of industry experience in software development. Pet. 17 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not address the level of ordinary skill in the art in its papers. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 7
- BurdenDecided for patent owner
“We agree with Patent Owner. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13
Claim constructioncites PhillipsPatents in suitUS 10,671,648 - Netflix, Inc. v. Videolabs, Inc.All claims unpatentablePTAB · Oct 2, 2024 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–14 are unpatentable: claims 1–4 and 8–11 as anticipated by Mehta, and claims 1–14 as obvious over Mehta and Schläpfer.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner agree that no claim terms require specific construction to resolve the unpatentability issues presented in the Petition. Pet. 23; PO Resp. 10–11. We agree and do not construe any terms.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Analysis We agree with Petitioner. Mehta discloses storing “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Ex. 1003 ¶ 98. Mr. Wechselberger testifies that this disclosure shows that Mehta’s “MAS receives, stores and supports functionally equivalent programs capable of running on multiple devices because each program corresponds to a different device having different device capabilities (e.g., written using different languages).” Ex. 1002 ¶ 66. This testimony is consistent with that of Dr. Goodrich, who testifies that “each application has a single version made for a particular device type.” Ex. 2020 ¶ 66. Dr. Goodrich later testifies that paragraph 98 of Mehta describes that there could be two functionally equivalent programs with the same name that are compatible with a single user’s computer. Id. at ¶ 88; see PO Resp. 31–32 (citing Ex. 2020 ¶¶ 87–88). We do not credit this later testimony, because it is inconsistent with Dr. Goodrich’s earlier testimony that “each application,” or program of Mehta, is “made for a particular device type.” Ex. 2020 ¶ 66. We agree with Mr. Wechselberger and find that a person of ordinary skill in the art at the time of invention would have understood that Mehta’s disclosure of functionally equivalent programs having the same name that are capable of running on multiple kinds of devices means that each program corresponds to a different device having different capabilities. Further, Mehta discloses that “the MAS only lists those applications that are supported by the subscriber’s device. This allows the subscriber to avoid the problem of having to explicitly select a compatible application.” Ex. 1003 ¶ 117; see Pet. 36–37 (citing Ex. 1002 ¶¶ 75, 77). Mr. Wechselberger testifies that a person of ordinary skill in the art at the time of invention would have understood this disclosure to mean that the MAS provides the subscriber with only a single subscriber-appropriate version that will work for the subscriber. Ex. 1002 ¶ 77. Although Patent Owner contends that Mehta is silent on whether only a single description would be provided if there were multiple implementations (PO Sur-Reply 10–11), we agree with Mr. Wechselberger and find that when multiple implementations have the same name, each implementation corresponds to a different device, and therefore, the MAS would only present to the subscriber the one implementation that works with the subscriber’s device. Ex. 1002 ¶¶ 66, 75, 77.” slip op. at 28
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“piece of content, while the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich, in his deposition, when asked if “one of ordinary skill in the art at the time of the ’790 patent would also understand that Microsoft Word for Windows and Microsoft Word for Mac are also functionally equivalent, correct?” answered “Yes . . . . But they would be even stronger than simply functionally equivalent. They would be different implementations of the same product.” Ex. 1029, 43:14–24. However, later in his deposition, Dr. Goodrich testifies that Microsoft Word for Windows and Microsoft Word for Apple Mac are separate applications, not different implementations of the same application. Ex. 1029, 48:1–20. We disagree with this later testimony. Neither Dr. Goodrich nor Patent Owner persuasively explains why Dr. Goodrich changed his unambiguous position from both his declaration and his earlier deposition testimony. For example, Dr. Goodrich testifies in his deposition that “for the Lion King example, a .MP3 and a .MOV are different implementations of the same product. They’re also functionally equivalent, but functionally equivalent is broader.” Ex. 1029, 45:7–11. Dr. Goodrich continues, “when Mehta is disclosing functionally equivalent, it is not referring to it as different implementations of the same product. Instead, it’s [describing] how to disambiguate [applications] not clustered in terms of implementations . . . based on other metadata.” Id. at 45:14–21. This explanation is unpersuasive because it is inconsistent with Dr. Goodrich’s declaration testimony, in which Dr. Goodrich explicitly testifies that the different versions of Lion King, as well as the different versions of Microsoft Word, are different implementations of the same product. Ex. 2020 ¶ 39. Specifically, in his declaration, Dr. Goodrich testifies that the “various versions of Lion King (such as an .mp3 file or an .mov file) are the implementations of the Lion King. For another example, . . . the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich testifies again that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Ex. 2020 ¶ 70. Further, the reason given in the explanation in his deposition, that Mehta needs to disambiguate applications that are not clustered in terms of implementations based on other metadata, would also apply to the different versions of Lion King, yet Dr. Goodrich consistently testifies that these different versions are different implementations, both in his declaration and in his deposition. Id.; Ex. 1029, 45:7–10. Petitioner contends, and we agree, that the inconsistent testimony of Dr. Goodrich appears to be an attempt to cure Patent Owner’s and Dr. Goodrich’s incomplete analysis of Mehta’s disclosure. See Reply 7–8. In particular, the Petition quotes Mehta’s disclosure that the MAS stores “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Pet. 28 (quoting Ex. 1003 ¶ 98). Dr. Goodrich addresses this disclosure by explaining that two applications, such as Microsoft Word and Apple Pages, are functionally equivalent but are two different applications, not multiple implementations of a single application. Ex. 2020 ¶ 70. In this analysis, Dr. Goodrich does not address the full disclosure of Mehta, which describes that the “functionally equivalent programs hav[e] the same name” (Ex. 1003 ¶ 98), such as Dr. Goodrich’s example of Microsoft Word for Windows and Microsoft Word for Apple Macs. See id. Thus, although Dr. Goodrich is correct in testifying that some functionally equivalent programs, such as Microsoft Word and Apple Pages, are not different implementations of an item of digital content, he is also correct in testifying that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Id. Yet Dr. Goodrich does not identify any difference between the multiple implementations of Microsoft Word and the functionally equivalent programs having the same name as described by Mehta.” slip op. at 18
Patent outcomesUS 7,233,790 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,233,790 - Netflix, Inc. v. VL Collective IP LLCAll claims unpatentablePTAB · Oct 2, 2024 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19, 20, and 22 are anticipated by Cassin; all claims are also obvious over Cassin and Huston and over Huston.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms that require analysis to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. Similarly, Patent Owner contends that “no express construction of any term is required.” PO Resp. 18. For purposes of this decision, we do not construe any claim terms.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“is included in the indication. See PO Resp. 40. However, the ’559 patent does not describe what is included in the claimed “listing.” Rather, throughout the disclosure of the ’559 patent, the phrase “the listing of one or more pieces of content stored in memory” or a variation thereof is repeated without any further elaboration. Ex. 1001, 3:13–15, 3:26–36, 12:22–26, 12:50–52, 13:29–30. For example, the Specification does not disclose that the listing of one piece of content includes the title of the piece of content, nor an identification number of the piece of content, nor any other information about the piece of content. The disclosed listing is no more than an item of information that indicates that a specific piece of content is stored in the memory of the terminal. Therefore, the plain and ordinary meaning of the claim term “a listing of one . . . piece[] of content stored in the memory,” read in light of the Specification of the ’559 patent, encompasses an item of information that indicates that a specific piece of content is stored in the memory of the terminal. We agree with Petitioner and find that Cassin’s indication that the client currently has the media content item describes an item of information that indicates that a piece of content is stored in the memory of the terminal. Therefore, Cassin’s indication that the client currently has the media item describes “a listing of one . . . piece[] of content stored in the memory” as claimed.” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Analysis We agree with Petitioner and find that Cassin’s offer to download an item describes “a response . . . that instructs the terminal to perform one or more actions” as claimed. Reply 11 (citing Pet. 25–26), 13–14. Cassin discloses that the server uses the user information received from the client to query a database in the server for a list of content to which the user is entitled. Ex. 1004 ¶¶ 162, 164. Cassin discloses that the server offers an item from the list to the client for downloading. Id. ¶ 163 (The server offers every item on the list), ¶ 164 (The server attempts to send an item on the list). Cassin discloses that the client checks to see if it already has the item. Id. ¶¶ 163, 164. If the client has the item, the client refuses the download offer. Id. If the client does not have the item, the client accepts the download of the item and stores the item in its content repository. Id. Thus, the client responds to the offer to download an item from the server by (a) checking to see if it has the offered item, and (b) either refusing the download if the client has the item or accepting the download if the client does not have the item. Therefore, we agree with Petitioner and find that “when the server offers a media item for the client to download, the server is ‘instructing the terminal to perform one or more actions to thereby control the flow of content.’” Reply 11 (citing Pet. 25–26). We agree with Petitioner that in response to the server’s offer, “the client will either ‘refuse the download’ (if it has the content) or ‘accepts the download of the media content item from the server and stores the media content in the local content repository’ (if the client does not have the content).” Id. (citing Ex. 1004 ¶ 163). We agree with Petitioner and find that by checking to see if it has the item, and “by refusing or accepting the download offer, the client is doing ‘something to control the flow of content’ in response to the server’s instruction.” Id. (quoting PO Resp. 23). We disagree with Patent Owner’s contentions to the contrary. In particular, we disagree with Patent Owner’s contention that the server’s offer “has not instructed the client to do anything—the client takes action based on other factors (whether or not it already has the media content item).” PO Sur-Reply 3; see PO Resp. 31–32; Ex. 2002 ¶¶ 91–93. We find that the client performs the actions of checking to see if it already has the item and, depending on whether it has the item, either accepting or refusing the offer, in response to receiving the offer from the server. Ex. 1004 ¶¶ 163, 164; Ex. 1003 ¶¶ 72–75. Thus, we agree with Petitioner that the server’s offer instructs the client to (a) determine whether the client has the item and (b) depending on whether the client has the item, either accept or refuse the offer, which describes “instructing the terminal to perform one or more actions to thereby control the flow of content” as claimed. We further find that, because the offered item is from the server’s list which was determined using information from the user and information from the server’s database, the offer to download the item describes “a response to the content status . . . based upon the terminal status information and the server status information” as recited in claim 1.” slip op. at 26
Patent outcomesUS 7,440,559 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,440,559 - PTAB · Sep 27, 2024 · IPR2024-00674 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted review of claim 44 on all asserted grounds and granted Texas Instruments’ motion to join IPR2023-01244 in an understudy role.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“On the present record, we agree with Petitioner that the two petitions filed to challenge the claims of the ’222 patent will not substantially burden the Board or the parties. The petitions in IPR2024-00673 and IPR2024- 00674 challenge different claims, and those claims appear on the present record to have different claim scope, as Petitioner argues. Paper 3, 3–4 (arguing that claim 44, challenged in IPR2024-00674, recites “a ‘surface layer,’ a ‘single drift layer,’ and ‘at least one well region disposed in the single drift layer,’ which are not” recited in the claims challenged in IPR2024-00673); Ex. 1001, 4:39–8:39. In addition, there is little overlap between the prior art asserted in the two petitions, and what overlap there is—the use of Kawagoe in both petitions—is used in different prior-art combinations in each petition. Compare IPR2024-00673, Paper 4, 5 (asserting Kawagoe alone and in combination with Gupta or Silverbrook), with IPR2024-00674, Paper 4, 5 (asserting Kawagoe in combination with Sakai). Accordingly, we do not exercise our discretion to deny either of the petitions challenging the ’222 patent for being parallel petitions.” slip op. at 5
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 16– 37. However, 35 U.S.C. § 315(b) also provides that the one year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Since the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2023-01244), which we grant as further discussed below (see infra § V), Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, regardless of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“statements made during prosecution of the ’195 patent contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support a preliminary finding that a graded dopant concentration is enough to teach 9 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1020, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. aiding carrier movement in a particular direction. Patent Owner does not dispute that Payne has a drift layer having a static unidirectional electric drift field and a well region having a graded concentration of dopants and a static unidirectional electric drift field at this stage of the proceeding. See generally Prelim. Resp. Patent Owner also does not dispute that Payne’s transistor has a surface layer and a substrate having an area with no active regions. Id. At this stage of the proceeding, Petitioner has the better position.” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,121,222
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.