• Cisco Systems, Inc. v. Securityprofiling, LLCInstitution denied
  PTAB · Jan 21, 2022 · IPR2021-01242 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 19 and 20 were obvious over Willebeek-LeMair.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we do not institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “However, unaddressed is the claim’s requirement that each of the two of the plurality of mitigation techniques be automatically applied “to the at least one device.” Throughout the discussion of the limitations of claim 14, and again with respect to remaining challenged claim 19, Petitioner only describes the mitigation techniques to be taught by the application of signatures to the intrusion detector functionality and the firewalling defense system. However, Petitioner also asserts that the “plurality of devices” of the claim are the devices within the network being protected. See Pet. 26 (in arguing that Willebeek-LeMair teaches “code for: receiving information in connection with at least one of a plurality of devices,” (14.4) citing network discovery functionality to discover vulnerabilities in a scan of “machines” in protected network 14). Thus, Petitioner fails to show how Willebeek-LeMair teaches or suggests “automatically applying at least two of the plurality of mitigation techniques . . . to the at least one device,” that is, to a device in network 14.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither Petitioner nor Patent Owner explicitly requests claim construction. Pet. 10–11; see Prelim. Resp. Patent Owner’s Preliminary Response raises certain implicit claim construction issues. Additionally, we acknowledge that, in a related litigation, a district court has issued a Markman order construing certain claims of the ’431 patent. Ex. 1016. However, in this instance, no resolution of claim construction issues is necessary to resolve the controversy, and thus, we do not construe any claim terms. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 11

  • Adverse judgmentOther

    “requesting inter partes review of claims 1, 2, 4–12, and 14–20 of U.S. Patent No. 9,100,431 B2. Ex. 1001 (“the ’431 patent”). After the Petition was filed, SecurityProfiling, LLC (“Patent Owner”) filed a Statutory Disclaimer of claims 1, 2, 4–12, and 14–18. See Ex. 2002. Thus, claims 19 and 20 for our consideration.1 Patent Owner also filed a Preliminary Response opposing institution of review as to the remaining challenged claims 19 and 20. Paper 6 (“Prelim. Resp.”).” slip op. at 1

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,100,431
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01041 · APJ Debra K Stephens · IPR · Final written decision

  DISH failed to prove claim 13 unpatentable as obvious over either Durand and Bennett or Goyal and Bennett.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima 261 F.3d 1355). Based on the present record, including the disclosure in the ’456 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine Petitioner’s asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’456 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)). As we determine the four instances of “at least” in Petitioner’s formulation introduce ambiguity, we remove these terms from our definition. Accordingly, we determine an ordinarily skilled artisan would have a Bachelor of Science in one of Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing resource reservations for UNIX-based computing systems, or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing resource reservations for UNIX-based computing systems.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We determine that it is not necessary to provide an express interpretation of any terms of claim 13 (Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review)).” slip op. at 9

  • BurdenNot shown unpatentable

    “However, Petitioner has not set forth with specificity where Bennett teaches the request uses the one or more object references. Indeed, Petitioner has not explained how these two teachings of Bennett disclose the recited limitations with sufficient specificity or how one of ordinary skill in the art would modify Durand with these teachings of Bennett to achieve the recited limitations. Accordingly, Petitioner has not established that the combination of Durand and Bennet teaches the subject matter of claim 13. Therefore, based on the entire trial record, we determine Petitioner has not established by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Durand and Bennet under 35 U.S.C. § 103.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its Reply, as noted by Patent Owner (PO Sur-reply 11), Petitioner offers a new theory, pointing to a different system call of Goyal (Pet. Reply 19–20 (citing Ex. 1090 ¶ 144 (citing Ex. 1002 ¶ 352–354))). Petitioner contends this new argument is to address Patent Owner’s alleged contention that “‘quality of service’ must already be ‘provided’ at the same time when the correspondence to the ‘reference to an object’ is created (Pet. Reply 19 (citing Ex. 1090 ¶ 141)). Thus, in Dr. Negus’ Reply Declaration, Dr. Negus asserts Goyal teaches the recited “quality of service guarantees that correspond to a reference to an object” relying on the “int hsfq_move (int from, int to, .....)” which “is used to move a thread from one leaf node to another”1 (Ex. 1090 ¶ 144). Petitioner’s alleged reliance on the hsfq_move (int from, int to, …….) system call instead of the int hsfq_mknod (char *name, int parent, int weight, int flag, scheduler_id side) system call represents a change in Petitioner’s unpatentability contentions that is presented for the first time in Petitioner’s Reply (see Pet. Reply 19–20). We acknowledge that the Petition mentions a “move” function: “Additionally, system calls are used to remove, move, and administer nodes in the scheduling structure. Goyal also discloses several additional functions to manage the scheduling structure, including removing, moving, and administering nodes.” (Pet. 61 (citing Ex. 1002 ¶¶ 350–352 (citing Ex. 1007 § 4))). But the cited portion of Dr. Negus’ Declaration simply states that there are other system calls, including “int hsfq_parse(char *name, int hint),” “int hsfq_rmnod(int id, int 1 We note Dr. Negus refers to the system call as “int hsfq_move” (see e.g., Ex. 1002 ¶¶ 144, 352) although Goyal discloses the system call as “hsfq_move” (Ex. 1007 § 4). We consider Dr. Negus’ naming to refer to the same system call as disclosed in Goyal. mode),” and “int hsfq_admin(int node, int cmd, void *args)” and the system call “‘int hsfq_move(int from, int to, .....)’ which ‘is used to move a thread from one leaf node to another’” (Ex. 1002 ¶ 352; see also id. ¶ 144 (repeating the same information as paragraph 352)). Additionally, these teachings of Goyal are discussed in conjunction with the limitation “utilizing an application programming interface . . . to establish one or more quality of service guarantees” (id. ¶¶ 356, 359). Thus, Dr. Negus’ initial Declaration does not elaborate on the move function, and the Petition does not rely on the “hsfq_move” system call to teach the limitations of claim 13. Petitioner asserts that this argument in reply is to address “Patent Owner’s new claim construction position” (Pet. Reply 19). We disagree. As outlined above, the Petition does not identify where an object reference is “used in the request,” as specifically recited in claim 13. Petitioner’s new reply argument, therefore, attempts to fill in a gap in Petitioner’s unpatentability contentions from the Petition that was pointed out by Patent Owner. Under the circumstances here, we do not consider this a permissible reply argument (see Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”)). Thus, we do not consider Petitioner’s newly presented contentions.” slip op. at 26

  Patent outcomesUS 6,725,456 not shown unpatentable
  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,725,456
• Configit A/S v. Versata Development Group, Inc.Instituted
  PTAB · Dec 22, 2021 · IPR2021-01055 · APJ Kevin F Turner · IPR · Institution

  The Board instituted IPR of claims 1–5 and 9–19 on five § 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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . 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) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’766 Patent. Accordingly, we institute an inter partes review of claims 1–5 and 9–19 of the ’766 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “For a reference to qualify as a printed publication, “before the critical date the reference must have been sufficiently accessible to the public interested in the art.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988). “When there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020); see also Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential) (determining that, based on the totality of the evidence, a reference bearing a copyright date, a printing date, and an ISBN date all earlier than the critical date of the challenged patent, and the reference was a “textbook from an established publisher” provided sufficient indicia at the institution state).” slip op. at 15

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

    “configuration error” With respect to the limitation “configuration error,” Patent Owner asserts that configuration error means “either (1) the condition that occurs when ‘a rule or series of rules is not properly defined and produces an undesired effect’ or (2) ‘a series of improperly defined rules causes a part to be in more than one state at the same time.’” Prelim. Resp. 10 (citing Ex. 1001, 1:54–61; Ex. 2001 ¶ 40). At this stage of the proceeding, we find that Patent Owner’s proposed construction is supported by the ’766 Patent specification, and adopt Patent Owner’s proposed meaning of “configuration error,” with the following remarks with respect to Patent Owner’s additional arguments regarding the claim construction. Patent Owner, however, also argues that “the specification concerns errors internal to the configuration engine and not ‘errors’ that prevent product configurator users from making their desired but impermissible selections.” Prelim. Resp. 10. We do not agree with Patent Owner’s argument because the first part of the construction, namely rules not being properly defined and “produc[ing] an undesired effect,” does not specify anything about an error being “internal” to the configuration engine. The specification provides that such a configuration error “may occur when a rule or series of rules is not properly defined and produces an undesired effect, such as the exclusion of a part that should be selectable” (Ex. 1001, 1:54–61, emphasis added), but the latter clause provides only one example of the undesired effect. We are not persuaded, based on our review of the Specification of the ’766 Patent that “an undesired effect” should be limited to the exclusion of a part. Thus, although Patent Owner argues that “a configuration error is not a condition that occurs when a user attempts to make a choice that is prohibited by a rule” (Prelim. Resp. 11 (citing Ex. 2001 ¶ 43)), at this juncture, we are not persuaded that such a condition would not be an undesired effect, according to the adopted construction. Therefore, we do not further limit the construction of “configuration error.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS Level of Ordinary Skill in the Art Petitioner, supported by Dr. Wood’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 or Electrical Engineering, Engineering Science, an engineering major with a significant computational component, or a similar discipline, or with at least two years of research or experience in configurable systems including testing.” Pet. 8 (citing Ex. 1003 ¶¶ 53–55). Patent Owner argues that “[t]here may be some differences between this and the correct level of skill in the art but those differences will not affect this case at this stage,” such that Patent Owner applies the proposed level of skill in the art without agreeing to it. Prelim. Resp. 10 (citing Ex. 2001 ¶¶ 35–37). At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,836,766
• Polygroup Services N.A., Inc. v. Willis Electric Co., Ltd.Adverse judgment
  PTAB · Dec 17, 2021 · IPR2021-00489 · APJ Jeffrey W Abraham · IPR · Adverse judgment

  The Board granted Patent Owner’s unopposed request for adverse judgment and terminated the IPR.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Paper 11, 1. Having reviewed Patent Owner’s unopposed request for adverse judgment, we determine that entry of judgment against Patent Owner is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). III. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner and this inter partes review is terminated pursuant to 37 C.F.R. § 42.73(b).” slip op. at 2

  None
  Patents in suitUS 9,671,097
• Bright Data Ltd. v. Metacluster LT, UabInstitution denied
  PTAB · Dec 1, 2021 · IPR2021-00983 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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” slip op. at 2

  • Skill levelSkill level board ownOther

    “Patent Owner does not contest Petitioner’s assertion (see generally Prelim. Resp.). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). in light of Petitioner’s definition of the level of ordinary skill in the art, we determine an ordinarily skilled artisan is: an individual who had (1) a bachelor’s degree or equivalent in the field of Electrical Engineering, Computer Engineering, or Computer Science, or in an equivalent field that includes network engineering as a topic of study (hereinafter, “technical study”), plus at least one year of industry technical experience in the computer network field, such as serving as an engineer for an Internet service provider performing network design, development, or configuration tasks, or as a software developer for network communications software or related utility software, or (2) three years of full-time technical experience in the field of electrical engineering, computer engineering, or computer science or in an equivalent field that includes network engineering or network communications software (hereinafter, “technical fields”), or (3) an equivalent combination of academic study in technical study and work experience in the technical fields.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Proxy Rotator’ as ‘a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting’” (Prelim. Resp. 15 (citing Ex. 1001, 5:4–7)). of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting” (id. at 5:4–7). In accordance with the Specification’s “general terminology description,” we construe the term “Smart Proxy Rotator” as a system coupled of separate components implementing a specific method and responsible for collecting statistical data, proxy control, rotation, maintenance, and reporting.” slip op. at 11

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

    “construed as “‘the portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider,’ which may be equal to the weight assigned to that particular proxy provider divided by the sum of weights assigned to all proxy providers during the same time period” (Prelim. Resp. 20 (citing Ex. 2003 ¶ 56)). Patent Owner’s definition requiring a “utilization threshold” to be a “portion of all proxy requests received by the SPR during a time period that the SPR will refer to a particular proxy provider” is too narrow. The ’948 Patent does not expressly define the term “utilization threshold,” and, instead, describes utilization thresholds using an example (id. at 8:1–8). The ’948 Patent states [o]ne of the usage examples can be the following: if one provider has a weight equal to 10, and the other provider has a weight equal to 20, the proxy rotator should use the second provider 66.6% of the time and the first provider 33.3% of the time, when no changes to the default providers’ weights have been introduced. These percentages are the utilization thresholds of each provider. threshold is a goal amount of use, not an actual amount of use. A utilization threshold may represent a desired maximum percentage (i.e., proportion), of proxy requests to be referred to a particular proxy provider. Based on the Specification’s use of a “utilization threshold,” we construe the term to mean “a maximum percentage of use assigned to a particular proxy provider that is equal to a weight for the particular proxy provider divided by the sum of respective weights assigned to all proxy providers during the same time period.”” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,601,948
• Hulu, LLC v. Sound View Innovations, LLCAll claims unpatentable
  PTAB · Oct 5, 2021 · IPR2018-01039 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–3, 7, 10, 11, 14, and 15 are unpatentable as obvious over Dougherty under 35 U.S.C. § 103.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine the only reasonable interpretation of the declaration is that Dr. Hall-Ellis is relying on university libraries’ general practice for indexing, cataloging, and shelving books in estimating the time it would 781 F.2d 897, 899 (Fed. Cir. 1986)). We have no evidence rebutting Dr. Hall-Ellis’s testimony as to university library practice (see id.). Although there is some discrepancy in what printing of Dougherty was relied upon when the MARC record and OCLC records were created, and what printing was cataloged and shelved, we determine, as a whole, these records evidence that the technical content of Dougherty relied upon was available at multiple libraries before the priority date. We determine Dr. Hall-Ellis’s declaration is competent evidence, and in light of the record before us, are persuaded the testimony and proffered evidence show Michigan Dougherty was accessible prior to the critical date.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill)). Based on the record before us and in view of the parties’ agreement at this stage of the proceeding, we adopt Petitioner’s formulation of the level of ordinary skill in the art, with the exception of the language “at least,” which introduces ambiguity. Thus, we determine, based on the record before us, a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer science, or equivalent degree or experience, with (i) two years of experience in the design and/or development of database and record management systems or (ii) more formal education in computer science, such as a Master’s degree, without the two years of practical experience.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner

    “[a] virtual database is a sequence of characters organized into one or more sections. Each section contains zero or more records, with each record made up of one or more fields containing information. Each section of the virtual database has an associated schema which describes the format of the records and fields. The virtual database itself has a schema which describes the format of the entire virtual database. The schema of the virtual database includes the schemas of each of the sections. A virtual database (VDB), such as initial VDB 106, is self contained and may be operated on further by other operators. A VDB is self contained, in that if a record is referred to in a field in the VDB, then the referred to record is contained in the VDB. (Ex. 1001, 3:28–42 (emphasis added).) The meaning of “virtual database” is clearly and deliberately set forth in the ’062 Patent so as to put an ordinarily skilled artisan on notice as to its intended definition.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “(Phillips, 415 F.3d at 1316.) The applicants set forth a special definition to the claim term, “virtual database,” in the Specification of the ’062 Patent (Ex. 1001, 3:28–42). Thus, the inventor’s lexicography governs. Nonetheless, we address Patent Owner’s contention that flat file databases are disclaimed. To that end, we determine the applicants did not set forth words or expressions of manifest exclusion or restriction. “[I]n order to disavow claim scope, a patent applicant must clearly and unambiguously express surrender of subject matter during prosecution” (Arendi S.A.R.L. v. Google LLC, 882 F.3d 1132, 1135 (Fed. Cir. 2018)).” slip op. at 15

  Patent outcomesUS 5,806,062 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 5,806,062
• Hologic, Inc. / Varex Imaging Corp. et al. v. University Of South Florida Board Of TrusteesInstitution denied
  PTAB · Sep 27, 2021 · IPR2021-00656 · APJ Debra K Stephens · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 2–6, 9–11, 16, or 17 unpatentable over Stewart or Freedman and Cade.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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)). Petitioner challenges claims 2–6, 9–11, 16, and 17 as unpatentable under both 35 U.S.C. § 102 and 35 U.S.C. § 103 (Pet. 3). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail in demonstrating that at least one of the challenged claims is not patentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a “person of ordinary skill in the art (‘POSITA’) at the time of the alleged invention would have at least three years’ experience developing software for computer workstations, and at least one year of this experience in a clinical environment” (Pet. 8 (citing Ex. 1003 ¶ 27)). The prior art itself demonstrates the level of ordinary skill in the art at the time of the invention (see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Based on the present record and the disclosure in the ’937 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine the definition offered by Petitioner—as interpreted by the panel— comports with the qualifications a person would have needed to understand and implement the teachings of the ’937 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther

    “We look to the Specification in interpreting the limitation. None of the terms in the above limitation is defined expressly in the ’937 Patent (see generally Ex.1001). The Specification describes, however, “a case may contain single-view or standard four-view mammograms (left and right medio-lateral, ML, left and right cranio-caudal, CC)” (id. at 5:2–5). Thus, the ’937 Patent distinguishes a “case” from a “mammogram” –– a mammogram is one slice of the case, not all the slices of a breast mammography (case). The ’937 Patent further describes an “analysis window,” in which “decimated views 41, 42 of the original images are provided in the upper section [and] . . . the lower part two windows 43, 44 display selected sections . . . at high resolution” (id. at 5:21–25). Thus, the analysis window provides, on one side, a view of an original image (e.g., left CC) in one form (e.g., decimated view 41), and a view of that original image in another form (e.g., high-resolution view 43) (id.; see also id. at Fig. 3). On the other side, the analysis window also provides a view of an original image (e.g., right CC) in one form (e.g., decimated view 42), and a view of that original image in another form (e.g., high-resolution view 44). Based on the record before us, “a mammogram image” is an image that is originally taken (“original image”), i.e., the left or right medio-lateral images, etc. The ’937 Patent further describes “[t]his arrangement enables the physician to keep the overview . . . while looking at the high-resolution sections” (id. at 5:25–28). “The overview images are lower-resolution, reduced-sized images and are displayed in a short-time period” (id. at 7:6– 8). “[A] common practice is to scan through the image in the decimated view but pan in the high-resolution view for a thorough and slow examination of certain regions of interest” (id. at 5:34–38). Thus, the ’937 Patent describes “display[ing] a mammogram image in a different form in each window,” e.g., both a lower-resolution, reduced-size (decimated) view of an original image and a higher-resolution view of that image in a window. Additionally, the ’937 Patent describes real-time grayscale adjustment of the window (id. at 5:39–40). In light of the disclosure of the ’937 Patent, we determine that the limitation “display a mammogram image in a different form in each window with grayscale values, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state” means the original mammogram image is displayed in a different form (i.e., different resolution) in each window “with grayscale values that, along with the illumination characteristics of said monitor, appears to a user as a mammogram in each window under a predetermined illumination state.” For similar reasons, we determine “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying the forms on the display means, each form displayed within a different sector of the display means,” as recited in claim 3 (Ex. 1001, 9:67–10:3) means the original mammogram image is displayed in a different form within a different sector of the display means. We further determine, “transforming the image into a plurality of varying-resolution forms, each form having a different set of greyscale values; and . . . displaying a first form on the first monitor and a second form on the second monitor,” as recited in claim 17 (id. at 10:61–65) means the original image is transformed into a plurality of varying-resolution forms, having different set of greyscale values, and displaying a first and a second form on a first and a second monitor, respectively. b) Other terms We determine we do not need to expressly construe any other terms for purposes of this Decision (see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”))).” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner, however, has not shown reasonably where, or how, those cited portions of Stewart disclose different forms of a mammogram image are displayed in multiple respective windows, i.e., “a plurality of windows . . . display[ing] a mammogram image in a different form in each window,” as recited in claim 2. In particular, Petitioner has not reasonably shown, or explained how, either of Stewart’s split screen option or tile mode displays different forms of the original image (see generally Pet.). Nor has Petitioner shown Stewart’s split screen option or tile mode displays those different forms of the original image in respective windows. Petitioner points out (Pet. 29) that Stewart describes the “tile presentation mode maximizes the number of simultaneous images displayed without compromising image quality” (Ex. 1005, 95, Fig. 7). That description, however, discloses displaying multiple (i.e., different) images in multiple windows, rather than displaying different forms of an image in multiple windows. Further, Petitioner contends that Stewart’s “split screen option allows an image set to span either (1) two display monitors, (2) one display monitor, (3) one-half display monitor (two image sets per display monitor), or (4) one-quarter display monitor (four image sets per display monitor)” ((Pet. 28 (quoting Ex. 1005, 95)). That description, however, like the description of tile mode, describes displaying multiple images in multiple windows instead of different forms of an image in multiple windows. For example, the split screen option displays one image split over more than one monitor –– not one image in different forms over more than one monitor. Additionally, although Petitioner contends Stewart describes “images are transformed into different forms having varying resolutions” (Pet. 31 (citing Ex. 1005, 95 (“images are stored with a greater bit depth (12-bits) than they may be displayed (8-bits)”)), that portion of Stewart does not describe that different forms of a mammogram image are displayed in multiple windows. Rather, the cited disclosure in Stewart describes a mammogram image stored in a different form. In particular, the cited description of Stewart discloses an image is stored with “a greater bit depth” than displayed (Ex. 1005, 95). That portion of Stewart does not describe that images are displayed in a plurality of different bit depths, i.e., “a plurality of windows” having “a different form” of a mammogram image “in each window.” Furthermore, Petitioner’s expert declaration of Dr. Bryan P. Bergeron does not explain reasonably how, or show where, the cited portions of Stewart describe displaying different forms of an image in multiple windows. Dr. Bergeron states that, in Stewart, “not only can the initial presentation of images appear in various grayscale values, but also further displays of images can do the same” (Ex. 1003 ¶ 55). Dr. Bergeron further states that “pursuant to the monitor characteristics and the window and level settings for display, images are transformed into forms, which may be shown in various windows, and each having a predetermined illumination state” (id. ¶ 56). Dr. Bergeron’s declaration describes different images being displayed in some particular form, i.e., at some display setting. None of Dr. Bergeron’s statements establish or explain how different forms of an image are displayed in multiple windows on the same monitor.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,630,937
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Oct 22, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied Everstar’s rehearing request, leaving in place the denial of institution on claims 1–30 because it had not shown an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 3

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

    “As Petitioner points out, the ’097 patent characterizes reinforcing strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 5

  • Expert testimonyDecided for patent owner

    “We are not persuaded by Petitioner’s argument that a genuine dispute of material fact exists with regard to the parties’ proposed construction of “disposed at a central portion.” Petitioner acknowledges that its declarant, Dr. Fantone, testified that none of the claim terms required a specific construction and that the claim terms “would be understood by one of ordinary skill in the art.” Req. Reh’g 13–14 (citing Ex. 1009 ¶ 22). As Petitioner points out, Dr. Brown, Patent Owner’s declarant, did not offer any “statement of disagreement with Petitioner’s position that the terms should be afforded their ordinary and customary meaning.” Req. Reh’g 14. As a result, there is no “conflicting” testimony from the declarants on this point. Nor is there any conflicting testimony from the declarants regarding the ordinary and customary meaning of “disposed at a central portion.” Although Dr. Fantone testified generally that a person of ordinary skill in the art would understand what “disposed at a central portion” means, Dr. Fantone never explained what that understanding would be. Thus, there is no dispute of material fact on this record regarding the plain and ordinary meaning of the claim term.” slip op. at 9

  Claim construction
  Patents in suitUS 9,671,097
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Rehearing denied
  PTAB · Jun 30, 2020 · IPR2019-01484 · APJ Jeffrey W Abraham · IPR · Rehearing

  The Board denied rehearing and maintained its denial of institution for claims 1–30, finding no abuse of discretion in its claim-construction analysis or treatment of factual disputes.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). When rehearing a decision on a petition, the decision will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2

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

    “strands 102a–c as “extend[ing] axially through the center portion of wire 10[0].” Ex. 1001, 14:59–60. Our construction of “disposed at a central portion,” which requires strands to be positioned in the wire so as to occupy at least the center of the wire, is consistent with both the description of strands 102a–c as extending through the center portion of the wire in the ’097 patent specification and the depiction of strands 102a–c in the center of wire 100 in Figure 5. Petitioner appears to argue that because reinforcing strands 102a–c occupy a space that is larger than “simply the central axis of the wire,” any strands disposed inside the wire (i.e., within the outer insulating layer of the wire) are also “disposed at a central portion of the wire.” Req. Reh’g 5. Nothing in Figure 5 or the ’097 patent’s description of Figure 5, however, supports a construction of “disposed at a central portion” that means simply “disposed inside the wire.” To the contrary, Petitioner’s argument is undermined by the fact that the ’097 patent expressly refers to the reinforcing strands 102a–c as extending through the central portion, but does not use the same language to characterize the position of conducting strands 104.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “construction of “plurality of reinforcing strands” contradicts the ’097 patent specification. Req. Reh’g 10–12. In our Decision, however, we never expressly construed this term. Instead, we noted that the ’097 patent addresses the possibility that yarn, which itself comprises multiple strands, can be used to form a single reinforcing strand. Dec. 34–35. We did not, as Petitioner contends, determine that “twisted strands must only be one reinforcing strand.” Req. Reh’g 10–11. To the contrary, as Petitioner itself points out, we expressly noted that the ’097 patent distinguishes between embodiments having a single reinforcing strand and those having multiple reinforcing strands. Req. Reh’g 10; Dec. 35. In view of this, we are not persuaded by Petitioner’s argument that we adopted a claim construction of “plurality of reinforcing strands” that contradicts the ’097 patent’s specification, which in turn “led to a clearly erroneous Institution Decision with respect to claims 16–22.” Req. Reh’g 12.” slip op. at 7

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We first note that Petitioner presents new evidence for the first time in the Request for Rehearing. Pursuant to 37 C.F.R. § 42.104(b)(3), a petition must set forth how the challenged claims are to be construed. In this proceeding, the Petition contains one paragraph addressing claim construction. Pet. 7. In the paragraph, Petitioner states a claim should be “accorded its ‘ordinary and customary meaning . . . as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent’” and, in a single sentence within that paragraph, indicates that “no terms require a specific construction.” Pet. 7. Petitioner thus had the opportunity to present its claim construction arguments and supporting evidence in its Petition, and chose not to do so. By way of contrast, in the Request for Rehearing, Petitioner allocates seven pages to the construction of the term “disposed at a central portion.” Req. Reh’g. 2–8. Petitioner is attempting to use the Request for Rehearing as an opportunity to reply to our Decision and present new arguments and evidence on claim construction. A request for rehearing, however, is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or for Petitioner to present new arguments or evidence.” slip op. at 3

  Claim construction
  Patents in suitUS 9,671,097
• Everstar Merchandise Co. Ltd. v. Willis Electric Co. Ltd.Institution denied
  PTAB · Feb 13, 2020 · PGR2019-00055 · APJ Stacey G White · PGR · Institution

  The Board denied institution because Petitioner did not show that claims 1–10 were more likely than not unpatentable under any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “the invention “would have had at least a Bachelor of Science degree (or equivalent) in Electrical Engineering, or a comparable field, and at least five years of experience in the fields of design of electrical wiring and/or decorative lighting.” Pet. 9 (citing Ex. 1009 ¶ 21). Patent Owner argues that Petitioner’s proposed definition recites an unnecessarily high level of skill. Prelim. Resp. 21. Patent Owner contends that the appropriate level of ordinary skill “would have been (1) a technician with at least two years of experience in the design of electrical wiring and/or decorative lighting, or (2) a person with at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Id. (citing Ex. 2001 ¶¶ 14–15). At this stage in the proceeding, we determine that the current record supports Patent Owner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Patent Owner’s description of an ordinarily skilled artisan.7 We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party offers any proposed constructions for any claim terms. Pet. 8–9; Prelim. Resp. 20. Specifically, Petitioner indicates, “no terms require a specific construction, as they would be readily understandable to a [person of ordinary skill in the art].” Pet. 9 (citing Ex 1009 ¶ 22). Patent Owner also indicates, for purpose of its Preliminary Response, that no claim construction is necessary at this stage, but reserves the right to propose constructions should trial be instituted. Prelim. Resp. 20. On this record and for purposes of this decision, we determine that no claim term requires express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “gauge of Sylvania’s net lights. Prelim. Resp. 24. Petitioner provides Exhibit 1007, which is a series of photographs of the Sylvania net lights, its packaging, and its inserts from the box. See Ex. 1007; see also Ex. 1010 ¶ 7 (describing Ex. 1007 as “a collection of photographs”). Petitioner also submitted Exhibit 1010, which is a declaration from William Shelleman describing the purchase of Sylvania. See Ex. 1010. Finally, Dr. Fantone’s declaration includes a description of Sylvania. Ex. 1009 ¶ 28. We have reviewed Petitioner’s evidence and we agree with Patent Owner that Petitioner has not established the wire gauge of Sylvania’s net lights because none of these documents purport to indicate the gauge of the wires in Sylvania. Thus, the question is whether the recited wire gauge teaches the asserted combination.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,119,664

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.