- Zoho Corporation / Zoho Corporation. PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00380 · APJ Karl D Easthom · IPR · Final written decision
Claims 10–18 are unpatentable as obvious under § 103(a) over Drell, Knappe, Elliott, Hendricks, and Doganata.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“electrical engineering, computer science, or equivalent with two years or more of experience in computing systems development.” PO Resp. 12 (citing Ex. 2001 ¶ 3). The two proposals largely overlap. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’612 patent specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, even if we were to adopt Patent Owner’s proposal, we agree with the parties that the outcome would be the same. See Reply 2 (Petitioner arguing that “under either definition the result is the same”); Tr. 49:11–14 (Patent Owner contending that as to defining a “person of ordinary skill in the art,” he “can’t point to a material difference that would change the outcome of this” trial).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In any event, even if Exhibit 2002 includes construction of a claim term at issue here, we determine below that Petitioner shows that the challenged claims would have been obvious under constructions consistent to any such terms proposed by Patent Owner.7 Moreover, as Petitioner argues, “Patent Owner arguments do not actually rely on any of these claim constructions,” and “only a handful of the listed terms actually appear in the claims of the ’612 patent.” Reply 2. In its Sur-reply, Patent Owner does not direct attention to any dispositive issue that turns on the district court claim construction. Sur-reply 2. Because any explicit construction would not alter the outcome, an explicit construction for any claim term is not necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” 7 As discussed below, Patent Owner presents an argument related to the district court claim construction of “VPN ‘tunnel.”’ See Ex. 2002, 13. (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“been obvious to implement a VPN tunnel with Drell’s system. Patent Owner does not dispute that Elliott specifically discloses a VPN tunnel that is consistent with the district court construction. Petitioner establishes persuasive motivation for employing Elliott’s well-known VPN tunnel in Drell’s conferencing system with a reasonable expectation of success. See Pet. 24–25, 32–33. For example, as noted above, Petitioner contends that Drell teaches that its “network 106 may comprise a packet switched network, such as the Internet” (Pet. 42 (quoting Ex. 1008, 3:33–38)), and Elliott “teaches communicating conferencing ‘media stream (e.g. voice, fax, data, video, etc.)’ over ‘the public Internet’ using ‘virtual private network (VPN) . . . IP-tunneling.’” (id. (quoting Ex. 1007, 2:66–3:1, 4:6–34, 6:43– 54)). Based on these teachings, Petitioner contends that it would have been obvious to employ a VPN tunnel in Drell’s network as Elliott teaches, in order to “provide Drell with secure communications as the communications traverse Internet network 106” between conference endpoints (rendering the endpoints/appliances secure). See id. at 42–43 (citing Ex. 1003 ¶ 236, “network 18 can be either a public or a carrier supported virtual private network (VPN) or local area network (LAN) which uses IP or IP-tunneling.” Reply 12 (citing Ex.1007, 4:28–32). Therefore, as Petitioner also argues “[t]his network allows for secure transmission of audio data via a VPN tunnel.” Id. (citing Ex. 1003 ¶¶ 234–236). Petitioner also persuasively explains that a POSITA would have understood that VPNs are beneficial because they reduce the need to lease private data lines, which reduces or avoids the costs for implementing a private network by communicating securely over the Internet. [Ex. 1003 ¶ 168] Indeed, the combination of Drell and Elliott is merely the ordinary use of a common technique (using VPN tunneling for conferencing data) in the similar conferencing system of Drell to yield predictable results of (1) securing the transmitted data, and (2) reducing or avoiding costs associated with leasing private data lines. Id. ¶169.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“because Elliot “teaches two independent calls with two independent remote parties connected to the call-center.” PO Resp. 27.10 Patent Owner also argues that Elliott “teach[es] away [from] sharing audio data between remote parties” so that “it would not be combined with Knappe or Drell which involve sharing audio and video between remote parties.” Sur-reply 7. Patent Owner points to teachings about Elliott’s agents to support its arguments. See id. at 4–8. 10 Again, Patent Owner presents this specific argument to unchallenged claim 19. See id. at 26–27. is not, teaching a different way to communicate audio (e.g., via “independent calls” between a call-center agent according to Patent Owner does not teach away from using audio or mixed audio. See PO Resp. 27. As noted above, Patent Owner admits that Elliott discloses “secure audio data . . .between the end user and call center,” therefore Elliott also does not teach away from transmitting and receiving “secure audio data” between remote parties. See PO Resp. 24. Moreover, Patent Owner’s arguments attack the references individually without addressing Petitioner’s specific reliance on different teachings in the references, where the Petition relies on Drell as teaching transmitting audio between remote parties and supplements that with the audio mixing teachings of Knappe, as summarized above. See Pet. 44–48. In addition, contrary to Patent Owner’s arguments, as Petitioner notes and as discussed above, Elliott generally discloses audio and also securing the transmission of audio data with VPN tunnels. See Reply 11 (stating that “Elliott teaches ‘collaborative Web browsing, audio conferencing, video conferencing, and application sharing” (citing Ex. 1007, 1:40–44; Ex. 1003 ¶ 133)). This parenthetical quotation by Petitioner is in a section titled “BACKGROUND OF THE INVENTION.” Ex. 1007, 1:32–45. Petitioner also shows that Elliott teaches the use of ‘“a virtual private network (VPN) . . . which uses IP or IP-tunneling’ for the transmission of ‘voice, fax, data, video’ and ‘[o]ther types of collaboration . . . data’ during the conference.” Reply 11 (emphasis added) (quoting Ex. 1007, 2:66–3:1, 4:30–32, 6:53–54; citing Ex. 1003 ¶ 133); accord Pet. 42 (materially similar showing (citing Ex. 1007, 2:66–1, 4:6–34, 6:43–54).” slip op. at 41
Patent outcomesUS 9,843,612 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,843,612 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and 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). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed
“We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32
Patent outcomesUS 9,094,525 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00378 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 1–8 are unpatentable under § 103(a): claims 1–4 over Drell, Knappe, and Voois, and claims 5–8 over Drell, Knappe, Voois, Elliott, and VPN Textbook.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 8. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and 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). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 7 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.8 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Moreover, Petitioner’s proposed construction of “mixed data stream” is not inconsistent with the district court’s construction of “first mixed data stream” and “second mixed data stream,” in that both constructions include at least audio data and video data, and Patent Owner does not argue otherwise.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that the combination of Drell and Knappe teaches limitation [1.1]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [1.1], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.10 See PO Resp. 16–18. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. Patent Owner also fails to explain how the alleged “fundamental” differences in Knappe and Drell have any bearing on how they are used in the proposed combination. See PO Resp. 16–18; Sur-reply 3–4. Rather, Patent Owner’s argument merely points out alleged differences between the references, while essentially ignoring their commonalities. To the extent Patent Owner is arguing that it would not have been obvious to physically combine Drell and Knappe or bodily incorporate them into each other,11 Petitioner states, with supporting testimony from Dr. Houh, that the 10 Although Patent Owner cites to paragraphs 21 and 22 of Mr. Dye’s Declaration (PO Resp. 17), this testimony does not support the arguments for which it is cited. In the Sur-reply, Patent Owner clarifies that the citation should have been to paragraph 20 of Mr. Dye’s Declaration (Sur-reply n. 1), but, as discussed below, this testimony merely repeats arguments made in the Sur-reply. See Sur-reply 4–5. 11 “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). proposed combination “permits, but does not require, physical incorporation of elements from Drell and Knappe.” Pet. 22 (citing Ex. 1003 ¶ 168) (emphasis added). In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 12 This is a new argument raised in the Sur-reply. However, even if we consider this argument, we do not find it persuasive for the reasons stated. (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination.”) (quoting Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)).” slip op. at 23
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“In the Sur-reply, Patent Owner further argues that “Drell and Knappe deal with traditional video conferencing and conferencing systems– dedicated circuit architecture using traditional hardware,” whereas “the ’525 patent is directed to ‘computer system architecture and more particularly to audio and video telecommunications for collaboration over hybrid networks.’” Sur-reply 4 (citing Ex. 1001, 1:17–20). To the extent that Patent Owner is arguing that Drell and Knappe are not analogous art to the ’525 patent, we do not find this persuasive. As Petitioner argues, both references pertain “to the field of multiparty conferencing, including mixing data from Internet and PSTN conference endpoints.” Pet. 17 (citing Ex. 1008, code (54), 3:33–37; Ex. 1006, 3:41–51, 6:59–62; Ex. 1003 ¶¶ 148–149). Patent Owner also argues12 that “[n]either Drell nor Knappe reflect or disclose an understanding of the requirements of the different mixers or would teach or suggest this to a person of skill in the art” (Sur-reply 4) but, aside from this conclusory statement, does not further address or explain why Petitioner’s contentions as to Drell or Knappe are incorrect. Although Patent Owner cites to paragraph 20 of Mr. Dye’s Declaration, this testimony merely repeats what is stated in the Sur-reply. In this instance, “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15” slip op. at 25
Patent outcomesUS 9,094,525 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,094,525 - Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCAll claims unpatentablePTAB · Jul 16, 2024 · IPR2023-00377 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–12 are unpatentable under §103: claims 1, 2, 4, 5, and 7 over Knappe, Elliott, and VPN Textbook; claims 3, 6, and 8–11 with Drell; and claim 12 with Drell and Hoke.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Dec. 10–11. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the evidence of record, including the asserted prior art and the ’332 patent’s specification, except that we delete the qualifier “or more” in the phrase “three or more years” to eliminate vagueness as to the stated amount of professional experience. However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that no claim construction is necessary for purposes of this Decision. Patent Owner does not argue, and we do not discern, that any claim terms are in controversy on the current record.8 See 8 Although Patent Owner mentions the district court’s claim construction for “Virtual Private Network (VPN)” and “VPN tunnel” in connection with its arguments for claims 1 and 8 (PO Resp. 21, 28), Petitioner argues, and we agree, that Patent Owner’s arguments do not suggest that Petitioner’s arguments are inconsistent with any of these constructions. Reply 2; see Tr. 8:1–9:1 (Petitioner’s counsel stating that “We don’t actually have a problem with [the district court’s] construction [of VPN]. I think it may be overly broad, but it doesn’t impact our analysis in either way.”); Tr. 9:2–14 (Petitioner’s counsel stating that “[T]here’s no difference between how Dr. Houh applied tunneling and how the [district court] construed it, so we’re fine with either construction . . . In fact, I see them as the same construction.”); Tr. 47:11–13 (Patent Owner’s counsel stating “I agree with [Petitioner’s counsel] that it may not matter whether his construction, his Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Textbook teaches step [1.3.2]. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination teaches this step, and provides reasoning for why a person of ordinary skill in the art would combine the references. Pet. 21–27 (citing Ex. 1003 ¶¶ 136–162), 37–39 (citing Ex. 1003 ¶¶ 145–162, 189–194; Ex. 1007, 1:43–44, 4:6–12, 4:31–34; Ex. 1010, 129, Fig. 7-10 ); Reply 9–19. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art substantially lack meaningful support from the viewpoint of a person of ordinary skill in the art or citation to the references. See PO Resp. 21–28; see also 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the 16 Patent Owner does not specifically address VPN Textbook in connection with claim 1 but does so in its arguments with respect to claim 8. PO Resp. 33–34; see infra § III.4.E.4. no weight.”). We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues. In addition, notwithstanding Patent Owner’s argument that “Knappe does not teach securing multi-party communication” (PO Resp. 19, 22), “securing multi-party communication” is not recited or implied in step [1.3.2].” slip op. at 41
Patent outcomesUS 9,253,332 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,253,332 - PTAB · Jun 21, 2024 · IPR2024-00343 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of claims 1–7 of the ’052 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board has set forth a two-part framework for this determination under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“B. Analysis The Interim Procedure instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In this proceeding, Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. In the Qualcomm litigation, however, Patent Owner described a person of ordinary skill in the art as having: a Bachelor of Science (or equivalent) degree in electrical engineering, computer engineering, or a related field, and 2–3 years of work experience in very large-scale integrated (“VLSI”) systems, such as application-specific integrated circuits (“ASICs”), application-specific standard parts (“ASSPs”), system-on-chip (“SoC”), or field programmable gate arrays (“FPGAs”), and has an understanding of on-chip interconnection networks. Ex. 1017, 11. In this proceeding, Petitioner’s definition is uncontested and appears consistent with the level of skill reflected in the specification of the ’052 patent (“Specification”) and in the asserted prior-art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition. We note, however, that we would reach the same conclusions in this Decision if we were to adopt the definition that Patent Owner set forth in the Qualcomm litigation. To the extent the parties dispute the definition of an ordinarily skilled artisan during” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,594,052 - PTAB · Jun 21, 2024 · IPR2024-00338 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–6 and 9–16 on all asserted challenges, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. GENERAL PRINCIPLES “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). In an inter partes review, a petitioner has “the burden to prove” that a reference “is a printed publication.” Id.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“combined throughput and latency guarantee (GT), or be best effort (BE), with an unspecified finite latency upper bound,” an ordinarily skilled artisan would have understood that one channel is “independently configurable” for “a combined throughput and latency guarantee (GT)” and that another channel is “independently configurable” for “best effort (BE), with an unspecified finite latency upper bound.” Ex. 1003 ¶ 103; Ex. 1005, 3. Petitioner quotes that disclosure in Goossens2002 when explaining what an ordinarily skilled artisan would have understood. Pet. 28 (quoting Ex. 1005, 3). Accordingly, we disagree with Patent Owner that Petitioner provides “no explanation” why an ordinarily skilled artisan would have” slip op. at 44
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 20, 2024 · IPR2024-00339 · APJ John R Kenny · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claim 12 was obvious over any of the four asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to claim 12. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has not met this standard and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“E. Level of Skill in the Art Petitioner argues that at the time of the alleged invention an ordinarily skilled artisan would have had at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or an equivalent technical degree, and two or more years of experience with system-on-chip, interconnect, or networking technologies. Pet. 8. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. After reviewing the record, we adopt Petitioner’s definition for the level of skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“II. CLAIM CONSTRUCTION AND THE DISTRICT COURT’S DETERMINATION OF INDEFINITENESS Neither party requests that we construe the optimal moment limitation. Pet. 8–9; Prelim. Resp. 25–28. Further, we see no need to construe this limitation sua sponte. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). For background, however, we address the claim” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“optimal moment limitation is subjective (and repeating that assertion in its Petition), Petitioner provides no explanation of why Bahadiroglu’s use of that term would have a meaning falling within the scope of the subjective meaning for that term in claim 12. Pet. 28–31 & n.4; Prelim. Reply 3–5. Petitioner has not explained what that subjective meaning of optimal is in the ’800 patent’s claims or why that term as used in Bahadiroglu would satisfy that subjective meaning in the ’800 patent’s claims. Pet. 28–31; Prelim. Reply 3–5. Thus, Petitioner’s showing is insufficient. Second, Petitioner has not explained why the disclosure of an optimal interval teaches or suggests transmission at an optimal time. Pet. 28–31. Spacing transmissions apart by an optimal interval would not inherently result in transmissions being performed at the optimal times. The optimal interval could involve transmissions that are not at the optimal times (when time is viewed by itself), and transmissions at the optimal times may not have the optimal interval separating them. We recognize that it is possible that in some, or many, cases an optimal interval would teach or at least suggest transmissions at optimal times. Petitioner, however, has not explained why it does in this case. Id.” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 8,086,800 - Qualcomm Incorporated / Samsung Electronics Co., Ltd. v. Network System Technologies, LLCInstitution deniedPTAB · Jun 17, 2024 · IPR2024-00355 · APJ Steven M Amundson · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute an inter partes review. We may institute an inter partes review only if “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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Based on Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), Patent Owner argues that we should exercise our discretion under § 314(a) to deny institution in view of the Samsung litigation and the Qualcomm litigation. See Prelim. Resp. 10–22; supra § II.B. Petitioner argues that we should decline to exercise our discretion under § 314(a) to deny institution. See Pet. 82–84. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of at least one claim challenged in the Petition. See infra §§ IV.E–IV.I. Hence, we do not consider discretionary denial under § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of analysis, we adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’893 patent as well as the asserted prior art. For instance, “a master’s degree” and “three years of work experience” would have allowed someone to understand the ’893 patent as well as the asserted prior art. See Ex. 1003 ¶ 32. Moreover, someone with a higher skill level will understand the technology at least as well as someone with a lower skill level. See Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011); Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011). Hence, “it is generally easier to establish obviousness under a higher level of ordinary skill.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). We note that our analysis would not change if we adopted Patent Owner’s description of an ordinarily skilled artisan.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“for “each data package comprising N data elements” is “significantly broader” than Petitioner’s proposed construction. See Pet. 9–10; Ex. 1026, 25; Ex. 1027 ¶ 164; Ex. 2034, 26. To decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial, we must determine the meaning of “each data package comprising N data elements.” Based on the current record, we agree with Petitioner that “each data package comprising N data elements” means “every data package communicated by the network stations has a fixed size of N data elements.”” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,072,893 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.InstitutedPTAB · May 20, 2024 · IPR2024-00156 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–6 and 8 under all asserted grounds after finding a reasonable likelihood that petitioner would prevail on at least claim 1 over Kuang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is statutorily authorized when “the information presented in the petition . . . and any 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). We determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’546 patent. Accordingly, we institute an inter partes review of claims 1–6 and 8 of the ’546 patent.” slip op. at 2
- BurdenDecided for petitioner
“denied because of the Petition’s improper reliance on the general knowledge of a person of ordinary skill in the art (i.e., contentions (1), (2), and (3) above), we have considered these arguments. However, we preliminarily determine, as discussed below, that certain of the cited prior art teaches all limitations of at least some of the claims. Therefore, reliance on the knowledge of a person of ordinary skill in the art is not required to supply any missing claim limitation(s) in at least one of the grounds. Accordingly, we need not expressly address these contentions of Patent Owner at this stage for purposes of our decision to institute trial. However, we invite the parties to provide further briefing on these issues during the course of the trial. With regard to Patent Owner’s contention that the Petition should be denied because the Schubert Declaration entirely repeats the Petition, and the Petition and Schubert Declaration include only conclusory statements of obviousness (contention (4) above), see Prelim. Resp. 20–24, we note that “[v]erbatim duplication between a brief and a declaration does not require giving the declarant’s testimony ‘little or no weight’ under Xerox,” provided that the testimony itself is sufficiently supported. Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 11 at 67 (PTAB Nov. 7, 2023) (emphasis added) (discussing Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022)) (precedential); Hum Indus. Tech., Inc. v. Amsted Rail Co., IPR2023-00540, Paper 10 at 37 (PTAB Aug. 11, 2023) (“If declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition”). Here, we agree with Patent Owner that Dr. Schubert’s testimony closely mirrors the language in the Petition. Nevertheless, on the record before us, we find that the support, including, for example, prior art citations and/or technical reasoning, provided in the declaration and repeated in the Petition is sufficient for demonstrating a reasonable likelihood that Petitioner would prevail in its challenge to at least one of the claims under at least one of the grounds. While expert testimony that mirrors the language of the petition, without more, may provide little help to the Board, we have evaluated the Schubert Declaration to determine the amount of weight attributable to the testimony therein at this stage of the proceeding, based on the support provided for the testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed definition of the ordinarily skilled artisan. See generally Prelim. Resp.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe terms in controversy only to the extent necessary to resolve the controversy. 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)). For purposes of this Decision, and based on the current record, we determine that no claim term requires express construction at this stage of the proceeding, with the exception of the term “synchronous signals” in limitation 1[D], which requires interpretation to the extent necessary to assess the merits of the parties’ assertions. The Specification does not expressly define “synchronous signals.” See generally Ex. 1001. Petitioner proposes a definition of “synchronous signals” based on how “a POSITA would have understood the term,” as: “signals that are sent to the slave nodes to control their corresponding LED strings at the same time.” Pet. 16–17. Patent Owner argues that there is no support for Petitioner’s definition of “synchronous signals,” but Patent Owner does not propose an express construction of the term. See Prelim. Resp. 21–23, 25–26. In the discussion on the merits below, we discuss the interpretation of the term “synchronous signals.” See infra Sec. III.D.2.a.v. As noted below, we invite the parties to present briefing on the interpretation of this term during trial.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,884,546 - Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Institution deniedPTAB · May 20, 2024 · IPR2024-00157 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“§ 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, and all supporting evidence, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art as of the filing date of the application for the ’988 patent “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. To the extent necessary for purposes of this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it appears consistent with the prior art before us in this proceeding.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“this limitation. Nonetheless, we find a close question as to whether Petitioner has made a sufficient showing with respect to this limitation, as the only evidence Petitioner cites in support of its argument that “[t]he term GND is often used interchangeably with the term VSS, which refers to negative voltage” (Pet. 8) is an identical, unsupported assertion in Dr. Schubert’s Declaration (Ex. 1003 ¶ 38) to which we accord little or no weight. See 37 C.F.R. § 42.65 (“(a) Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Because we determine below that Petitioner has not made a sufficient showing with regard to limitations 1[E] and 1[H] (see infra” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Having considered the parties’ respective arguments and the evidence of record, we agree with Patent Owner that Petitioner has failed to make a sufficient showing with respect to limitations 1[E] and 1[H]. As Patent Owner points out, the Petition effectively concedes that there is a structural difference between pins, as disclosed by Lai, and pads, as recited in claim 1, and Petitioner does not reconcile this difference or explain why a person of ordinary skill in the art would have been motivated to modify Lai’s disclosure and use pads rather than the pins Lai discloses. Prelim. Resp. 31. Even if pins and pads may both be types of terminals, claim 1 specifically recites pads, not terminals, and Petitioner has not persuasively shown that a person of ordinary skill in the art would regard pins and pads as interchangeable or that pads would otherwise be suggested by Lai’s disclosure of pins. Further, as Patent Owner also points out, Petitioner’s inclusion of “general knowledge of a POSITA” in the asserted ground is unavailing knowledge” is to be brought to bear on the combination and has instead “left it to Patent Owner and the Board to speculate on which of the features of the asserted art differs from the claims and how the asserted art or its teaching would have been modified.” Prelim. Resp. 13–14. Although general knowledge of a person of ordinary skill in the art may, under certain circumstances, be relied upon to supply a missing claim limitation (see, e.g., Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337–38 (Fed. Cir. 2020)), such reliance is improper where, as here, it is based merely upon “conclusory statements and unspecific expert testimony” (id. (quoting Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1366 (Fed. Cir. 2016))).” slip op. at 19
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,124,988
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.