• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing SAAll claims unpatentable
  PTAB · Sep 15, 2022 · IPR2021-00639 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious; the Board denied the motion to amend because proposed substitute claims 26–50 would have been obvious over Oksala or Oksala and Yoshioka.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. The Level of Ordinary Skill in the Art Our reviewing court has explained that “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Al-Site Corp. v. VSI International, Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999)). “This reference point prevents these factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “e. Conclusion For the reasons provided above, we are persuaded that each limitation of independent claim 1 is either taught or suggested by Oksala. We are also persuaded that Oksala’s disclosure would have motivated a person of ordinary skill in the art to modify Oksala, as Petitioner contends, to yield the subject matter of claim 1. Accordingly, we conclude that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Oksala.” slip op. at 52

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Accordingly, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 35 and 43 would have been obvious over Oksala.” slip op. at 78

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “2. Indefiniteness In its Opposition, Petitioner contends the limitations “wherein each established data connection is a packet-switched connection; and wherein each requested data connection is a packet-switched connection,” as recited in substitute claim 26, and similarly recited in substitute claims 35 and 43, render the proposed substitute claims indefinite. MTA Opp. 12 (emphases added). First, according to Petitioner, the term “packet-switched connection” does not have a claim construction, which means that it can refer to two different types of packet-switched data (i.e., Layer 1 and packet network). Id. at 12. Second, Petitioner contends that there are two recitations of “a packet-switched connection,” making it “unclear if they are the same packet-switched connection or a different one.” Id. at 12–13. Third, Petitioner contends that the claims include “another antecedent issue” because “a wireless network” appears twice in the claim. Id. at 13.” slip op. at 81

  Patent outcomesUS 8,189,611 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,189,611
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.Some claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 6, 7, and 8 are unpatentable as anticipated by and obvious over Sachs; claims 3–5, 9, and 10 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A POSITA at or about the time of the alleged invention (January 5, 2006) would have had a degree in electrical engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing wireless radio systems for data transmission and retransmission. Pet. 35 (citing Ex. 1002 ¶¶ 40–53). Patent Owner contends that a person having ordinary skill at the time of invention—January 5, 2006—in the relevant art would be one a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 9 (citing Ex. 2001 ¶ 27). According to Patent Owner, “[a]lthough Patent Owner’s proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties’ contentions as to the level of ordinary skill in the art are similar, and there does not appear to be a dispute that needs to be resolved. We adopt Petitioner’s definition as it appears to be consistent with the specification of the ’396 patent and the cited references. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8

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

    “Petitioner proposes “that all claim terms should be accorded their plain and ordinary meaning, as understood by a POSITA and consistent with the specification and file history of the ’396 patent.” Pet. 34–35. Patent Owner “agrees that the claim[] terms should be given their plain and ordinary meaning” and “reserves the right to provide alternate constructions if any of the terms become material to the Board’s decision.” PO Resp. 10. We need not expressly define any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). We note that the parties both implicitly construe claim limitation 1[c], “stopping the timer when the at least one data block is received from the transmitter while the timer is running, in order to prevent a triggering of a status report before the timer expires” similarly. See e.g., infra § III.D.2.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “separate ‘reordering procedure,’ to which the timer is tied.” Id. (emphasis added). We agree that the cited evidence in Sachs more closely supports Petitioner’s position that the “timer is stopped when and because the missing PDUs are received,” and not after the occurrence of some additional step in which PDUs in the RLC buffer are shuffled into sequential order. Petitioner persuasively supports its position with, for example, its annotated version of Figure 5, reproduced above, which depicts that the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received––Sachs does not depict or describe an additional step of reshuffling occurring before the timer is stopped. Pet. 41. Patent Owner’s argument that Sachs teaches “a reordering procedure is performed before any other actions are taken” is unavailing because it is not supported by the cited evidence. In support of this argument, Patent Owner’s Declarant, Mr. Regis J. Bates, Jr., offers similar testimony that “the expiry of the timer in Sachs does not trigger a status report as in the ’396 patent, instead a reordering procedure is performed before any other actions are taken,” but does not explain why the reordering procedure takes place before “any other actions.” Ex. 2001 ¶ 53 (citing Ex. 1003, Figs. 4, 5, Abstract, 8:25–31, 9:11–15) (emphasis added). In his Second Declaration, Mr. Bates adds no further detail or explanation and cites the same portions of Sachs. Ex. 2006 ¶ 29. None of the cited portions of Sachs sufficiently supports a finding that Sachs teaches or suggests that “a reordering procedure is performed before any other actions are taken,” as Patent Owner contends and as Patent Owner’s Declarant testifies. Id.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We clarify that limitations 1[c] and 1[d] cannot both occur in response to the same set of stimuli. Limitation 1[c] can be triggered in response to one set of stimuli and limitation [d] can be triggered in response to a different set of stimuli as is shown in Sachs’s figures. In order for Petitioner to prevail, it need only show one of these mutually-exclusive claim limitations to satisfy the claim, as it contends. Petitioner persuasively shows that, under a first theory, with a first set of stimuli, the timer is stopped before it expires and limitations 1[a], 1[b], and 1[c] are performed as shown in Figure 5 of Sachs. Ex. 1003, Fig. 5. Under a second theory, with a different, second set of stimuli, the timer is allowed to expire and limitations 1[a], 1[b], and 1[d] are performed as shown in Figure 4 of Sachs. Id. at Fig. 4. In Petitioner’s annotated version of Figure 4, PDUs 3 and 4 are not received within the time period set by the T_reorder timer––as such, the T_reorder timer expires and a status report acknowledging PDUs up to 14 and negatively acknowledging PDUs 3 and 4 (i.e., indicating that PDUs 3 and 4 are missing) is sent. Pet. 41. In Petitioner’s annotated version of Figure 5, the T_reorder timer is stopped when out-of-order PDUs 3 and 4 are received within the time period set by the T_reorder timer and as such, the T_reorder timer is stopped before it can expire. Id.” slip op. at 16

  Patent outcomesUS 7,869,396 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,869,396
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. 3g Licensing S.A.All claims unpatentable
  PTAB · Sep 12, 2022 · IPR2021-00584 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 16–19, 21, 22, 39, 40, and 42 are unpatentable under § 103: Meeting45 anticipates claims 16–19, 21, 22, and 39, and Meeting45 with Meeting45bis renders claims 40 and 42 obvious.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In order to obtain the benefit of the filing date of an earlier application, 35 U.S.C. § 120 requires that the earlier application include a disclosure that complies with the written description requirement of 35 U.S.C. § 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–2 (Fed. Cir. 1997). To comply with the written description requirement, a specification “must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed.” Lizardtech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) (emphasis added). The written description requirement “guards against the inventor’s overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991). “[O]ne skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (emphasis added). “Entitlement to a filing date extends only to the subject matter that is disclosed; not to that which is obvious . . . Therefore the parent application must actually or inherently disclose the elements of the later-” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Disclaimer not foundDecided for petitioner

    “We are not persuaded that the disclosures of the ’625 patent cited by Patent Owner “‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” See Thorner v. Sony Comput. Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Thorner, 669 F.3d at 1365). “‘To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’ and must ‘clearly express an intent to redefine the term.’” Id. (quoting Thorner, 669 F.3d at 1365). “Disavowal requires that ‘the specification [or prosecution history] make[] clear that the invention does not include a particular feature,’ or is clearly limited to a particular form of the invention.” Id. at 1372 (alterations in original) (internal citations omitted).” slip op. at 15

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

    “We determine that the usage and description of the term E-AGCH in documents accompanying the 3GPP TS 25.211 v6.2.0 (2004-09) standard along with at least one later version––3GPP TS 25.211 v6.7.0 cited by Patent Owner in its infringement complaint (see, e.g., Ex. 1017, 3)––are consistent and that E-AGCH would have been known and understood by a POSITA to carry the meaning set forth therein as of the filing date of the application underlying the ’625 patent, March 31, 2005.10 We further conclude that one of skill in the art would have understood that the patentee used that term in the ’625 patent in accordance with the 3GPP’s definition.” slip op. at 14

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

    “accessibility with respect to any of the cited references. See generally PO Resp. 17–18. For the reasons that follow, we find that Petitioner’s showing sufficiently demonstrates public availability and accessibility for Meeting45, Meeting39, and Meeting45bis prior to March 31, 2005. 1. Meeting45 Petitioner asserts that Meeting45 (Ex. 1004) “is a 3GPP change request document that was publicly available on the 3GPP FTP server no later than December 3, 2004.” Pet. 18 (citing Ex. 1021 ¶¶ 64, 77). In support of this assertion, Petitioner cites the Bishop Declaration, in which Mr. Bishop describes in detail how he searched for and found the Meeting45 document by navigating the 3GPP FTP website. Ex. 1021 ¶¶ 54–63. Based on this process, Mr. Bishop testifies that “by December 3, 2004, an interested POSITA using reasonable diligence could have located Meeting45 on the 3GPP website, downloaded the reference without providing any credentials, and disseminated the reference to others without restriction.” Id. ¶ 64. We have reviewed the relevant portions of Mr. Bishop’s Declaration and are persuaded that his testimony sufficiently demonstrates that Meeting45 was publicly available and accessible prior to March 31, 2005 (the earliest priority date to which the ’625 patent is entitled). See id. ¶¶ 54– 63; see also id. ¶¶ 55–57 (testimony as to availability and accessibility of attachment distributed via email and stored on an email list archive).” slip op. at 27

  Patent outcomesUS 7,551,625 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,551,625
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing 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)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; 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.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

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

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 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 48

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Gaf Materials LLC v. Kirsch Research And Development, LLCAll claims unpatentable
  PTAB · May 24, 2022 · IPR2021-00192 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–33 are unpatentable: claims 1, 8–12, and 19 are anticipated by Lou; the remaining claims are obvious over the stated Lou-based combinations.

  RulingsFinal written decision

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

    “patent. See Phillips, 415 F.3d at 1315–17. The term “extrusion lamination” does not appear anywhere in the ’482 patent outside of issued claim 1, but our understanding is supported by the prosecution history of the ’482 patent. Claim 1 as originally filed in the application that issued as the ’482 patent recited, in relevant part, “a reinforcing scrim of interwoven strands for supporting tensile forces in multiple directions; and at least one layer of thermoplastic material affixed to a side of the reinforcing scrim for providing a weather-resistant barrier.” Ex. 1002 (’482 patent prosecution history), 33. In response to a rejection of the claims as anticipated by U.S. Patent No. 5,523,357 to Peterson, describing a rubber mill calendering process, the applicant amended claim 1 to add the phrase “by extrusion lamination.” Id. at 71, 76. We find nothing to suggest that a person of ordinary skill in the art would have understood that amendment to add a requirement of an additional layer of thermoplastic material, separate and apart from the “at least one layer of thermoplastic material” already recited in the original claim, to serve as a binder between the scrim and the original layer of thermoplastic material. The applicant explained in remarks accompanying the amendment, “Peterson fails to disclose forming a thermoplastic layer over the reinforcing scrim by an extrusion lamination process.” Id. at 71 (italics, underlining, and capitalization omitted). We, thus, find that the added phrase specifies how the recited “thermoplastic material” must be “affixed” to “the side of the reinforcing scrim,” but does not alter the recited function of the thermoplastic material, namely, “for providing a weather-resistant barrier.” Although the applicant’s remarks further state that “[c]ontrarily [to the rubber mill calendering process of Peterson], the roofing underlayment of the present invention is formed by an extrusion lamination process which bonds the various layers together, including the pre-formed films, reinforcement scrim, and slip-resistant material” (id.), claim 1 does not recite “pre-formed films” or “slip-resistant material”; such additional layers are recited in dependent claims 5 (“metallized film”) and 2 (“layer of slip-resistant material”), respectively (Ex. 1001, 6:29, 6:37). Looking finally to the extrinsic evidence of record, including the testimony of the parties’ experts and other exhibits filed by the parties, we find no persuasive evidence to show that the recitation of extrusion lamination requires an additional layer in addition to the recited scrim and the at least one layer of thermoplastic material affixed to a side of the scrim. In that regard, notwithstanding Patent Owner’s contentions, we are not persuaded that “extrusion lamination” and “extrusion coating” are mutually exclusive. Rather, we credit Mr. Kaczkowski’s testimony that extrusion coating would also be considered “extrusion lamination” if, for example, it “results in the extrudate being permanently bonded to the substrate.” Ex. 2020, 28:17–20. While Patent Owner argues that Mr. Kaczkowski’s statement “is nothing more than restatement of the extrusion coating process,” and “[t]o think otherwise would require believing that ‘extrusion coating’ involves a thermoplastic layer that is extruded, and thus coated, onto a substrate with the result being that it is not permanently bonded, i.e., it will delaminate from the substrate” (PO Sur-reply 5), we disagree with Patent Owner’s further contentions that “[s]uch a product makes no sense” and “[u]nder Petitioner’s theories, the [prior art] would not work” (id.). Although there could indeed be extrusion coating processes that would result in coatings that are not permanently bonded, it does not follow that the cited prior art used such processes. Further, although a laminate may be affixed to substrate by an adhesive or other binder, we find no persuasive evidence in the record that the binder must be a separate layer from the laminate.” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “the “reinforcing scrim of interwoven strands” recited in claim 1 and Lou’s polypropylene polymer 2 to the recited “thermoplastic material.” Id. at 22– 23. Petitioner further contends that Lou discloses “affixing the thermoplastic material by extrusion lamination,” citing Lou’s disclosures that “[e]xtruder 20 supplies polypropylene polymer 2 through a slit orifice to deposit a thin continuous coating on the surface of sheet 1” and that coated sheet 3 is pressed by a calendaring nip formed by heated and unheated rolls. Id. at 23 (quoting Ex. 1005, 2:34–44) (citing Ex. 1003 ¶ 19; Ex. 1005, 2:45– 49).” slip op. at 34

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Having considered the parties’ respective arguments, we find that Petitioner’s contentions are supported by the evidence of record, and we find that Petitioner has articulated sufficient reasoning with rational underpinnings (including support both from the cited prior art and from Mr. Kaczkowski’s testimony) to combine the relevant teachings of Lou and Goodacre. We disagree with Patent Owner’s suggestion it is insufficient that Mr. Kaczkowski opined that a person of ordinary skill would have evaluated the proposed combination based on the combined teachings of the asserted references. As the Supreme Court has explained, When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103. KSR, 550 U.S. at 421. Patent Owner does not dispute Goodacre’s teachings or that combining those teachings with Lou would increase the tensile strength of Lou’s underlayment, but appears instead only to fault Mr. Kaczkowski for not determining whether those solutions would be less expensive than other alternatives. Such arguments are not persuasive. Although, as cited above, Petitioner alleges in the Petition that a skilled artisan would have recognized cross-lamination as “a simpler, less costly way to manufacture a nonwoven reinforcing scrim . . . consistent with Lou” (Pet. 37), we find that is only one among several reasons identified by Petitioner and Mr. Kaczkowski for the combination (see, e.g., id. at 34–35 (additionally identifying increased tensile strength as a well-known benefit of orienting polyolefin fabric)), each of which is independently persuasive.” slip op. at 53

  • ExcludeMotion to exclude, grantedGranted

    “Motion to Exclude. Federal Rule of Evidence 801 defines “hearsay” as a “a statement that: (1) the declarant does not make while testifying in the current trial or hearing; and (2) a party offers in evidence to prove the truth of the matter asserted in the statement.” Fed. R. Evid. 801(c). We agree with Petitioner that Patent Owner is offering Dr. Reitman’s testimony for its truth. As Petitioner points out, Dr. Reitman’s testimony is presented in the Patent Owner Response in alleged support of Patent Owner’s argument. See Reply Mot. Excl. 1 (citing PO Resp. 22 (“Maureen Reitman recognized that ‘extrusion coating’ and ‘extrusion lamination’ were two different processes”; “[A]s Ds. [sic] Reitman recognized, a POSITA would understand ‘extrusion coating’ to be different than ‘extrusion lamination.’”)). Further, Rule 802 provides that hearsay is not admissible unless a federal statute, the Federal Rules of Evidence, or other rules prescribed by the Supreme Court provide otherwise. Fed. R. Evid. 802. We agree with Petitioner that no exception or exclusion applies in this case. Mot. Excl. 1. Although, as Patent Owner contends, Federal Rule of Evidence 703 provides that “[a]n expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed,” and that “[i]f experts in the particular field would reasonably rely on those kinds of facts or data in forming an opinion on the subject, they need not be admissible for the opinion to be admitted,” we are not persuaded that opinions of others offered in litigation are the sort of “facts or data” that experts in the field of roofing underlayments would reasonably rely on in forming their own opinions.” slip op. at 64

  Patent outcomesUS 6,308,482 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,308,482
• Termax Company v. Illinois Tool Works Inc.Institution denied
  PTAB · May 12, 2022 · IPR2022-00106 · APJ Rae Lynn P Guest · IPR · Institution

  The Board denied institution on the sole design claim because Petitioner did not show a reasonable likelihood of prevailing on anticipation by Scroggie or obviousness over Scroggie, Scroggie and Benedetti, or Benedetti and Scroggie.

  RulingsInstitution decision

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

    “Scroggie is based entirely on the premise that we cannot consider the appearance of the lower platform. See Pet. 32 (“Factoring out unclaimed features and the functional aspects of the lower platform, a side-by-side comparison of the remaining aspects of the claimed design . . . illustrates the D’826 design is identical in all material respects to Scroggie and is anticipated . . . .”). Indeed, on the record before us, Petitioner does not address the design as a whole, to the extent that it includes the appearance of the lower platform, in order to show that an ordinary observer, giving such attention as a purchaser usually gives, would deem the design depicted in Scroggie to have the same overall visual appearance as that claimed in the ’826 patent. Rather, Petitioner asserts that “there are no differences between Scroggie and the claimed design.” Pet. 41. Indeed, on the record before us, we agree with Patent Owner that the lower platform is significant to the overall appearance of the fastener design, and thus Petitioner’s analysis is not sufficient on this record. Because we disagree with Petitioner’s premise that the lower platform’s appearance is primarily dictated by function, Petitioner has not established a reasonable likelihood of prevailing as to this ground.” slip op. at 22

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “platform is not visible “at all times during the fastener’s normal use,” but is “hidden from view.” Pet. 24. Again, the use of the fastener is not limited to use with a seal for a vehicle. Petitioner provides no evidence of manufacturing techniques, sales, advertising, or installation, to support the contention that “[f]rom manufacture, sale and installation, the lower platform is enshrouded by the perimeter seal.” Id. at 25 (citing Ex. 1005 ¶ 65). And, although Petitioner relies on Mr. Wheelock’s testimony, that testimony is unsupported on the record before us. See Ex. 1005 ¶ 65 (failing to identify any support for his opinion). Accordingly, we give Mr. Wheelock’s testimony on this point little 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.”). Additionally, as noted above, we are not persuaded that a seal is a necessary component for a general fastener, and, thus, we are not persuaded that fasteners are not manufactured or sold without seals attached. Moreover, we agree with Patent Owner that such a position is not supported by case law.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a person having at least a Bachelor’s degree in Mechanical Engineering and at least three years of experience in push-in fastener engineering, and specifically sealing fasteners, as used in the assembly of vehicle trims.” Pet. 9–10 (citing Ex. 1005 ¶ 37). Patent Owner argues that the Petitioner’s definition leaves out a key detail “that the person actually has to be a ‘designer’” and “incorrectly alleges that the person at issue need only be someone with ‘experience’ with push-in fastener ‘engineering,’ without any experience whatsoever in designing them.” Prelim. Resp. 11–12. However, Patent Owner also asserts that an ordinary designer is “[a] person having an engineering degree and at least three years of experience in designing fasteners with designs similar to the ‘D826 patent, or comparable qualifications acquired through work experience.” Id. at 12 (bold emphasis added). Because Patent Owner’s definition includes qualifications acquired through “work experience” broadly, we think the parties’ definitions are quite close. In particular, neither definition strictly requires three years of design experience in fasteners; rather, each includes comparable qualifications through other work experiences in fastener technology. Accordingly, the result is not impacted based on whether we rely on Petitioner’s definition or Patent Owner’s definition of the skilled artisan. Further, based on the limited record before us, we note that the level of ordinary skill is reflected in the prior art designs of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “In construing the design claim, if the particular appearance of a design aspect is dictated by its function, the functional element’s appearance cannot significantly contribute to an ornamental design because it would necessarily have the same appearance in any other device where it serves the same function. Sport Dimension, 820 F.3d at 1321 (“[T]he fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation.”). Accordingly, if a feature is shown in the prior art as a whole having a variety of appearances and yet serves the same function, the appearance is likely not critical to its function, or that feature would have looked identical in each device’s design. See Best Lock, 94 F.3d at 1566 (“A design is not dictated solely by its function when alternative designs for the article of manufacture are available.”); L.A. Gear, 988 F.2d at 1123 (“When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). Thus, to determine what visual aspects of a design are primarily functional, any analysis must consider how that feature appears throughout the prior art and whether and what aspects of that feature appear consistently.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousness
• Facebook, Inc. v. Express Mobile Inc.Instituted
  PTAB · Mar 18, 2022 · IPR2021-01457 · APJ Russell E Cass · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–7, 11, and 12 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “We are not persuaded that Petitioner’s and Google’s status as defendants in co-pending litigation involving the ’044 patent rises to the type of “significant relationship” described in Valve. In Valve, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, Paper 11 at 10. The Board determined that there was “a significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the present record indicates any such relationship between Petitioner and Google. Rather, they were sued by Patent Owner on the same day—as part of a myriad of similar filings against dozens of other defendants. See Prelim. Resp. 25; see also Paper 3, 1–4 (Patent Owner’s Mandatory Notices listing forty-six lawsuits involving the ’044 patent filed by Patent Owner). The record shows some coordination among numerous defendants in various cases on the issue of claim construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and Phrases for Construction), 2006 (email chain discussing claim construction issues in district court). But, as Petitioner argues without refutation by Patent Owner, this is the “type of cooperation [that] is actively encouraged by district courts.” See Reply 2.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “discretion under 35 U.S.C. § 325(d) to deny review. Prelim. Resp. 31–32. Patent Owner does not, however, explain how the prior art or the arguments asserted in the Petition are the same or substantially the same as art or arguments previously presented to the Office. See id.; see also 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”). Indeed, Patent Owner acknowledges the lack of overlap. Sur-reply 2 (noting that “there is no overlap in art between the Petition and [the ’711 IPR petition],” but asserting that does “not somehow make this not harassment”). Patent Owner also asserts that Petitioner had “the opportunity to view Patent Owner’s arguments and the Board’s reasons for denial” before it filed the Petition. Id. at 4. Patent Owner is incorrect with regard to the timing of the denial of the ’711 petition, which was denied on October 4, 2021—over a month after the Petition was filed in this matter. The Board’s reasons for denial of the ’711 petition could not have factored into Petitioner’s choice of prior art in the present Petition. We, therefore, also decline to exercise discretion under 35 U.S.C. § 325(d) to deny review.” slip op. at 14

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

    “institute review. 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 information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’044 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage, Patent Owner does not propose an alternative assessment. We note that Patent Owner’s declarant, Dr. Almeroth, describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 31. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’044 patent and the asserted prior art.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,928,044
• Facebook, Inc. v. Express Mobile Inc.Instituted
  PTAB · Mar 4, 2022 · IPR2021-01455 · APJ Aaron W Moore · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–7, and 11 because Facebook showed a reasonable likelihood of prevailing on both asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner

    “We are not persuaded that Petitioner’s and Google’s status as defendants in co-pending litigation involving the ’755 patent rises to the type of “significant relationship” described in Valve. In Valve, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, Paper 11 at 10. The Board determined that there was “a significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the present record indicates any such relationship between Petitioner and Google. Rather, they were sued by Patent Owner on the same day—as part of a myriad of similar filings against dozens of other defendants. See Prelim. Resp. 25; see also Paper 4, 1–2 (Patent Owner’s Mandatory Notices listing 20 lawsuits involving the ’755 patent filed by Patent Owner). The record shows some coordination among numerous defendants in various cases on the issue of claim construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and Phrases for Construction), 2006 (email chain discussing claim constructions issues in district court). But, as Petitioner argues without refutation by Patent Owner, this is the “[kind of cooperation that] is actively encouraged by district courts.” See Reply 2.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “discretion 35 U.S.C. § 325(d) to deny review. Patent Owner does not, however, explain how the prior art or the arguments asserted in the Petition are the same or substantially the same as art or arguments previously presented to the Office. See Prelim. Resp. 30–31; see also 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”). Indeed, Patent Owner acknowledges the lack of overlap. Sur-reply 2 (noting that “there is no overlap in art between the Petition and [the ’709 IPR petition],” but asserting that does “not tip the scale”). Patent Owner also asserts that “Petitioner had the opportunity to view Patent Owner’s arguments and the Board’s reasons for denial” before it filed the Petition. Id. at 4. Patent Owner is incorrect with regard to the timing of the denial of the ’710 petition, which was denied on October 4, 2021—over a month after the Petition was filed in this matter. The Board’s reasons for denial of the ’709 petition could not have factored into Petitioner’s choice of prior art in the present Petition. We also decline to exercise discretion under 35 U.S.C. § 325(d) to deny review. B.” slip op. at 13

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

    “institute review. 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 information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’755 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art as of April 2008 would have possessed at least a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years of experience in web-based software application development, including experience in developing software and systems for storing, retrieving, and transmitting information (such as text and images) over a computer network such as the Internet (or equivalent degree or experience). Pet. 7 (citing Ex. 1002 ¶ 16). At this stage, Patent Owner does not propose an alternative assessment. We note that Patent Owner’s declarant, Kevin C. Almeroth, Ph.D., describes the level of ordinary skill in the art similarly to the assessment offered by Petitioner. See Ex. 2001 ¶ 29. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner as it is consistent with the ’755 patent and the asserted prior art. D.” slip op. at 15

  § 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,063,755
• Facebook, Inc. v. Express Mobile Inc.Instituted
  PTAB · Mar 3, 2022 · IPR2021-01456 · APJ Amber L Hagy · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–7, 11, and 12, finding a reasonable likelihood that the asserted obviousness grounds would prevail.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “We are not persuaded that Petitioner’s and Google’s status as defendants in co-pending litigation involving the ’287 patent rises to the type of “significant relationship” described in Valve. In Valve, the Board noted that “Valve and HTC were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, Paper 11 at 10. The Board determined that there was “a significant relationship between Valve and HTC with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Nothing in the present record indicates any such relationship between Petitioner and Google. Rather, they were sued by Patent Owner on the same day—as part of a myriad of similar filings against dozens of other defendants. See Prelim. Resp. 28; see also Paper 4, 1–5 (Patent Owner’s Mandatory Notices listing 49 lawsuits involving the ’287 patent filed by Patent Owner). The record shows some coordination among numerous defendants in various cases on the issue of claim construction. See Exs. 2005 (Defendants’ List of Proposed Claim Terms and Phrases for Construction), 2006 (email chain discussing claim construction issues in district court). But, as Petitioner argues without refutation by Patent Owner, this is the “type of cooperation [that] is actively encouraged by district courts.” See Reply 2.” slip op. at 11

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “discretion under 35 U.S.C. § 325(d) to deny review. Prelim. Resp. 33–35. Patent Owner does not, however, explain how the prior art or the arguments asserted in the Petition are the same or substantially the same as art or arguments previously presented to the Office. See id.; see also 35 U.S.C. § 325(d) (“In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”). Indeed, Patent Owner acknowledges the lack of overlap. Sur-reply 2 (noting that “there is no overlap in art between the Petition and [the ’710 IPR petition],” but asserting that does “not tip the scale”). Patent Owner also asserts that “Petitioner had the opportunity to view Patent Owner’s arguments and the Board’s reasons for denial” before it filed the Petition. Id. at 4. Patent Owner is incorrect with regard to the timing of the denial of the ’710 petition, which was denied on October 4, 2021—over a month after the Petition was filed in this matter. The Board’s reasons for denial of the ’710 petition could not have factored into Petitioner’s choice of prior art in the present Petition. We also decline to exercise discretion under 35 U.S.C. § 325(d) to deny review.” slip op. at 13

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

    “institute review. 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 information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’287 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2

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

    “On this record, and especially in the absence of guidance by the parties, we do not view the situation before us as falling within the ambit of Novo. On the one hand, the formatting structure of claim 1 places “a Player” at the same indentation level as several other limitations that appear to be sub-limitations of “an authoring tool configured to.” Petitioner made the same observation before the district court, and argued that “the claim as structured makes no sense if no verb precedes ‘a Player.’” Ex. 2009, 27. On the other hand, however, the punctuation of the claim gives a different impression. In particular, the action-verb sub-limitations following “an authoring tool configured to” are each separated by a comma—whereas the recitation of “a Player” is separated from the previous limitation by a semicolon. In the structure of claim 1, this punctuation suggests that “a Player” is not a sub-limitation of “an authoring tool configured to,” but is instead a component at the same level as an authoring tool. We base this observation on the consistent use of commas in claim 1 to differentiate sublimitations, as opposed to the consistent use of semicolons to separate limitations at a higher level. At this juncture, and on this record, we find this differentiation in punctuation to be a more compelling indication of the hierarchy of the limitations than the relative indentation of the clauses. And, under these circumstances, we find no error satisfying the Novo test to be evident. Rather, we determine that, on its face, claim 1 is subject to a reasonable reading in which no action verb must precede “a Player.” In short, on the record before us, we decline to interpret “a Player,” as recited in claim 1, as something that the authoring tool must “produce.” No further construction is necessary at this stage.” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,471,287
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.

  RulingsInstitution decision

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

    “Obviousness Analysis A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, primarily: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9

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

    “Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,931,797

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.