- Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2021-00737 · APJ Karl D Easthom · IPR · Final written decision
Claims 1–38 are unpatentable as obvious under §103(a): claims 1–34, 36, and 38 over Zavracky, Chiricescu, and Akasaka; claim 35 with Satoh; and claim 37 with Alexander.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Petitioner’s Showing, Claims 1–22, 36, and 38 Claim 1’s preamble recites “[a] processor module comprising.”” slip op. at 29
- Expert testimonyOther
“incorporation-by-reference of pages of evidence that Patent Owner attributes to Petitioner. Also, the cited three pages of Exhibit 2014 are in the middle of an industry article, and the pages are densely packed two-column pages that facially appear to have at least the same number of words in some of the complained-about citations to multiple paragraphs that Petitioner provides to Dr. Souri’s Reply Declaration. Here, Patent Owner leaves it to the Board to dig into the cited pages of Exhibit 2014 to find the alleged TSV interconnection issues and place it in context to the background information in the whole article. In reaching our decision, we exercised judgment as to all the evidence cited by the parties for its relevance, context, and substance, and weighed it accordingly.” slip op. at 123
Patent outcomesUS RE42,035 unpatentable§ 103 obviousnesscites KSR · Graham - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01570 · APJ Karl D Easthom · IPR · Final written decision
The Board held claims 1–38 unpatentable under §103 over the listed combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, as we noted in the Institution Decision, in light of Lin’s teachings and absent explicit explanation during prosecution by the Examiner, the rejection and reasons for allowance provide further support the understanding that the “functional to accelerate” limitations require a number of contacts extending throughout the thickness of the wafers in a vertical direction (vias) within the periphery of the die to allow multiple short paths for data transfer between the memory and process[ing element].” slip op. at 20
Patent outcomesUS RE42,035 unpatentable§ 103 obviousnesscites KSR · Graham - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2021-00736 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 2, 4–6, and 8–29 are unpatentable as obvious under §103 based on the listed combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Accordingly, as we noted in the Institution Decision, in light of Lin’s teachings and absent explicit explanation during prosecution by the Examiner, the rejection and reasons for allowance provide further support the understanding that the “functional to accelerate” limitations require a number of contacts extending throughout the thickness of the wafers in a vertical direction (vias) within the periphery of the die to allow multiple short paths for data transfer between the memory and process[ing element].” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Souri’s support for TSV issues is a citation to “Ex. 2014 at 85, 97, 90.” Ex. 2011 ¶ 82. Patent Owner provides the same citation without any explanation of the citation. PO Resp. 41. This amounts to the same type of incorporation-by-reference of pages of evidence that Patent Owner attributes to Petitioner. Also, the cited three pages of Exhibit 2014 are in the middle of an industry article, and the pages are densely packed two-column pages that facially appear to have at least the same number of words in some of the complained-about citations to multiple paragraphs that Petitioner provides to Dr. Souri’s Reply Declaration. Here, Patent Owner leaves it to the Board to dig into the cited pages of Exhibit 2014 to find the alleged TSV interconnection issues and place it in context to the background information in the whole article. In reaching our decision, we exercised judgment as to all the evidence cited by the parties for its relevance, context, and substance, and weighed it accordingly.” slip op. at 110
Patent outcomesUS 7,282,951 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,282,951 - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01568 · APJ Karl D Easthom · IPR · Final written decision
Claims 1, 2, 4–6, and 8–29 are unpatentable as obvious under § 103 based on the listed combinations of prior art.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, as we noted in the Institution Decision, in light of Lin’s teachings and absent explicit explanation during prosecution by the Examiner, the rejection and reasons for allowance provide further support the understanding that the “functional to accelerate” limitations require a number of contacts extending throughout the thickness of the wafers in a vertical direction (vias) within the periphery of the die to allow multiple short paths for data transfer between the memory and process[ing element].” slip op. at 19
Patent outcomesUS 7,282,951 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,282,951 - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2021-00735 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–6 and 26–31 are unpatentable as obvious over the stated combinations of Zavracky, Chiricescu, and Akasaka, with Satoh or Alexander added for dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The parties dispute the level of ordinary skill in the art. The level of” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review, the Board construes each claim “in” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“articulated reasoning to support a conclusion of obviousness. PO Resp. 2–3, 23–39; PO Sur-reply 10–14. (i) Alleged Misrepresentation of Chiricescu First, Patent Owner contends that “Petitioner misrepresents Chiricescu to allege motivation to combine Zavracky and Chiricescu.” PO Resp. 24–25 (Section VI.A.3(a)). Patent Owner specifically asserts that Chiricescu does not employ Zavracky’s principles, does not utilize Zavracky’s principles to improve reconfiguration time, and “does not employ Zavracky’s die-area vertical interconnections to connect a memory die to an FPGA, and no die-area vertical is involved whatsoever in reconfiguring Chiricescu’s FPGA.” PO Resp. 24 (citing Pet. 18–19, Ex. 1004, 232 (Exhibit page 1), 234 (Exhibit page 3); Ex. 2011 ¶ 6117). The record does not support this line of argument. Chiricescu’s Abstract indicates the paper describes “[t]he architecture of a 3-dimensional FPGA for reconfigurable computing machines” and “is based on a novel 3-D circuit technology developed at Northeastern University.” Ex. 1004, 232 (Abstract); see Pet. Reply 13. Chiricescu specifically notes “[a]t Northeastern University, the 3-D Microelectronics group has developed a unique technology which allows us to design individual CMOS circuits and stack them to build 3-D layered FPGAs which can have vertical metal 17 Dr. Souri’s declaration testimony cited by Patent Owner (Ex. 2011 ¶ 61) is a single-sentence conclusion that provides no more reasoning than that included in the Patent Owner Response to the Petition (Paper 19).” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“3. Independent Claims 1, 2, 26, and 27 Turning to the independent claims 1, 2, 26, and 27, Petitioner presents” slip op. at 47
Patent outcomesUS 7,126,214 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,126,214 - Xilinx, Inc. v. Arbor Global Strategies, LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01567 · APJ Barbara A Benoit · IPR · Final written decision
The Board held claims 1–6 and 26–31 unpatentable as obvious over the cited combinations of prior art.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art The parties dispute the level of ordinary skill in the art. The level of” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“C. Claim Construction In an inter partes review, the Board construes each claim “in” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).” slip op. at 8
- Strike new argumentNew argument consideredDecided for petitioner
“we do not agree with Patent Owner that we should not consider Dr. Franzon’s Reply Declaration. Patent Owner makes only general assertions that seem to be based primarily on multiple paragraphs being identified in a citation, which as discussed below we find provide context for Petitioner’s arguments. Additionally, Patent Owner does not address the significant overlap in the cited paragraphs with arguments made in the Reply. Moreover, in reaching our decision regarding the patentability of the challenged claims, we exercised judgment as to all the evidence cited by the parties for its relevance, context, and substance, and weighed it accordingly.” slip op. at 91
Patent outcomesUS 7,126,214 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,126,214 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Obviousness Analysis A claim is unpatentable under 35 U.S.C. § 103(a) if the 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 the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, primarily: (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) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,931,797 - PTAB · Feb 16, 2022 · IPR2021-01150 · APJ Bryan F Moore · IPR · Institution
The Board instituted IPR on claims 1–18 under § 103 over Paxton, Sutton, and Ivershen, finding a reasonable likelihood of success on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We concur with Petitioner’s assertions regarding the status of the underlying, related litigation. With respect to Fintiv factor (1), we determine this factor to be neutral. Although the parties stipulated to a trial date, the district court has yet to enter that schedule or hold a scheduling conference. The district court has continued the scheduling conference until after it decides the pending motion to stay. See Ex. 1031, Ex. 1032, 4:11–22. On this record, we are not persuaded that the district court will adhere to the previously agreed upon August 2022 trial date. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Given the facts above, because Ivershen was submitted and discussed during the prosecution of the ’903 patent and in IPR2018-01654 and IPR2018-01655, Ivershen qualifies as art that was “previously presented” to the Office. Thus, we find that Ivershen, the same prior art asserted in the Petition, previously was presented to the Office. Nevertheless, Petitioner asserts that the other prior art references in” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Noting that relevant experience and education can substitute for each other, Petitioner states that a person of ordinary skill in the relevant art, at the time the ’903 patent was filed, had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 13 (citing Ex. 1003 [Declaration of Dr. Robert Akl] ¶¶ 18–20). Petitioner’s definition of a person of ordinary skill, which Patent Owner does not dispute at this stage, appears appropriate for the technology addressed by this proceeding.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “no terms require construction.” Pet. 13. Patent Owner asserts “no express construction of any term is required to resolve any controversy in this proceeding.” Prelim. Resp. 12. After review of the current record, we conclude that no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,530,903 - Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution deniedPTAB · Feb 16, 2022 · IPR2021-01151 · APJ Stacey G White · IPR · Institution
The Board denied institution for claims 1–24 because the petition did not show a reasonable likelihood that the challenged claims were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“respect to this limitation for several reasons including that Petitioner’s “alleged rule generation and provisioning is responsive to detecting malicious activity, not ‘responsive to the correlating.’” Prelim. Resp. 27–28. On this record, we agree with Patent Owner. The claims require that “responsive to the correlating of . . . packets transmitted by the network device with . . . packets received by the network device: generating . . . based on the correlating, one or more rules.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” and “responsive to” the correlation of packets.” slip op. at 24
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,659,573 - Unified Patents Inc. v. Ideahub, Inc.All claims unpatentablePTAB · Feb 7, 2022 · IPR2020-01338 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–9 are unpatentable; substitute claims 13–16 are denied as obvious over Chen, OAI, 3GPP, and Brueck, and claims 17–20 are withdrawn.
RulingsFinal written decision- Expert testimonyPatent owner expert discountedDenied
“B. Patent Owner’s Motion under § 42.64(c) is denied as based on untimely objections to testimony. Patent Owner styled its Motion as a “Motion to Exclude Petitioner’s” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“9. Rationale to combine Chen and OAI” slip op. at 39
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8. Whether OAI is Analogous Prior Art Petitioner set forth reasons why OAI is analogous art in its Petition.” slip op. at 34
Patent outcomesUS 8,645,562 unpatentable§ 103 obviousnesscites Phillips · KSR · Graham · NautilusPatents in suitUS 8,645,562
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.