• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

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

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

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

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

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

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• Kingston Technology Company, Inc. v. Spex Technologies, Inc.Institution denied
  PTAB · Aug 17, 2017 · IPR2017-00825 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show a reasonable likelihood of prevailing on claims 55 or 57.

  RulingsInstitution decision

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

    “Our Rules require that a petition for inter partes review identify “[h]ow the construed claim is unpatentable under the statutory grounds identified” and must specify “where each element of [a challenged] claim is 3 Petitioner proposes a definition for a person of ordinary skill in the art. Pet. 13; see Ex. 1010 ¶ 20. Patent Owner does not challenge this definition. For purposes of this Decision and to the extent necessary, we adopt Petitioner’s definition. found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Moreover, “a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009) (citing Donaldson, 16 F.3d 1189, 1193 (Fed. Cir. 1994) (en banc)).” slip op. at 10

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

    “2. “security module” and “target module” The terms “security module” and “target module” both are recited in each challenged claim. Petitioner identifies a dispute between itself and Patent Owner in related district court litigation as to whether those terms require only “functional (not necessarily physically distinct) modules.” Pet. 15. Specifically, Petitioner points to a statement in an infringement claim chart that appears to have been attached as an exhibit to Patent Owner’s complaint in the litigation that the accused device “has at least two modules, a security module (e.g., cryptographic functionality) and a target module (e.g., storage functionality).” Id. (citing Ex. 1008, 2). Petitioner states that it “expressly disagrees with Patent Owner’s broad construction of the ‘modules’ language as covering structures that are not physically distinct.” Id. Petitioner contends that the proper construction of “module” “requires a structure that performs as a ‘security’ module and another separate (potentially connected) structure that performs as a ‘target’ (e.g., memory module, second security module, etc.).” Id. at 18.” slip op. at 8

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

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

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

    “We agree with Patent Owner. Petitioner does not sufficiently, persuasively explain how Jones’s disclosure of a memory card that “stores information enabling [a] host computer to automatically identify the particular . . . card as soon as the card and host are connected, and to automatically establish [an] appropriate hardware/software interface” teaches or suggests “receiving a request from the host computing device for information regarding the type of the modular device” and “providing the type of the target module to the host computing device in response to the request,” as recited in claim 55. Indeed, Jones’s statement that the card includes information enabling the host to “automatically” identify the card “as soon as the card and host are connected” suggests not only that receipt of a request is unnecessary, but also that the information is not provided “in response to [a] request.” We also are not persuaded by Petitioner’s alternative argument based on a device driver “directly interrogat[ing] the CIS structures in the attribute memory.” Pet. 20. As Patent Owner points out (Prelim. Resp. 16), Jones describes that as separate from the embodiment relied upon by Petitioner as disclosing all other limitations of claim 55, whereas anticipation requires that all of the limitations be arranged or combined in the same way in the prior art as recited in the claim. Net MoneyIN, 545 F.3d at 1371. Moreover, because Petitioner does not advance any argument that the “CIS structures in the attribute memory” perform the remaining claim steps or explain how the “operably connecting” step of claim 55 would be taught or suggested by Jones “in cases wherein the host computer is not provided with PCMCIA Card Services and Socket Services functions,” we agree with Patent Owner that this alternative argument also fails to establish a reasonable likelihood that Petitioner would prevail in its obviousness challenge to claim 55 over Jones.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,003,135
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

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

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

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

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Smart Microwave Sensors GmbH v. Wavetronix LLCAll claims unpatentable
  PTAB · Jul 17, 2017 · IPR2016-00488 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 9, 10, 12, 13, 22, 23, and 25 are unpatentable, including as anticipated by Boles or Farmer and obvious over combinations including Boles, Farmer, Herman, and others.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedGranted

    “1. Exhibits 1002, 1008, 1009, and 1012 Patent Owner argues the date printed on each of Exhibits 1002, 1008, 1009, and 1012, is inadmissible hearsay under FRE 801 and 802 as out of court statement offered to prove that truth of the matter asserted—that each document was a printed publication as of the date printed on that document (i.e., that it was sufficiently publicly accessible). Paper 45, 2–3 (citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper 41 (PTAB April 23, 2015)). As discussed supra, we agree with Patent Owner that the dates printed on these Exhibits are hearsay with no applicable exception. Thus, we grant Patent Owner’s motion requesting that we exclude the copyright notice date from each of Exhibits 1008, 1009, and 1012, and exclude the date of the EuMC conference on Exhibit 1002. However, we note that the documents per se are not excluded from the record as hearsay—only the date imprinted on each as proof of the printed publication status of each document. The underlying documents of these Exhibits are offered not to prove the publication dates thereof but, instead, are statements offered to demonstrate the knowledge of persons of ordinary skill in the art. Petitioner may rely on other evidence to establish the date of public accessibility of each of these documents, the analysis of which we have set forth supra. See Section II.B.1–4.” slip op. at 54

  • Skill levelNot reached
  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream. Ex. 1036, 98:21–99:13. In light of that testimony, we determine that Patent Owner’s expert testimony in support of their assertion is not credible.” slip op. at 14

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

    “Id. at 49:19–50:10. Given, at best, significant ambiguity as to whether the Specification and other evidence requires that “traffic data” must refer to “all or substantially all vehicles,” we are persuaded that such a requirement would not be proper under a broadest reasonable construction. Regarding Patent Owner’s assertion that “traffic data” is limited to data about multiple vehicles on a particular section of roadway (PO Resp. 7– 8), Petitioner counters by identifying references in the field of traffic engineering that use mobile sensors (i.e., not at a fixed location) for acquiring “traffic data.” Pet. Reply 2 (citing Ex. 1031 ¶¶ 6, 22, 181–183). Referring to pages 7–13 of Exhibit 1031 (Texas Highway Operations Manual discussing “Vehicle-based Equipment”), Patent Owner’s expert testified, on cross-examination, as follows: Q In view of the paragraph, would it be accurate to note that one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of the traffic stream? A It says that a vehicle-mounted radar unit can be used to measure the timing speed of other vehicles in the traffic stream. It does not say it is used to measure the traffic stream. Q I said measure the speed of the traffic. A Yes. This says it is measuring the speed of vehicles in the traffic stream. Q So one of ordinary skill in the art would understand that the equipment located in a vehicle can be used to measure the speed of vehicles in a traffic stream? A That is how it’s worded, the speed of other vehicles in the traffic stream.” slip op. at 14

  Patent outcomesUS 6,693,557 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,693,557
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00547 · APJ Garth D Baer · IPR · Final written decision

  Claims 57–59 are unpatentable as anticipated by Jaffray MICCAI 2001 and the Jaffray Publication, and as obvious over the identified Jaffray combinations.

  RulingsFinal written decision

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

    “communication system that facilitates communication between many devices and that uses a networking protocol to selectively route messages to their intended devices.’” PO Resp. 9 (internal quotation marks omitted). Petitioner proposes a broader construction: “a link between two or more components of the radiation treatment system that allows information to be shared between them.” Reply 2. In our Final Written Decision in Elekta, Inc. v. Varian Medical Systems, Inc., IPR2015-01401 (PTAB Dec. 23, 2016) (Paper 56, “IPR2015- 01401 FWD”), we construed the same term based on nearly identical arguments and substantially the same evidence. See IPR2015-01401 FWD 7–8. In our Decision, we rejected the same argument Patent Owner presents in this case—that a “communications network” requires a networking protocol to selectively route messages to their intended devices. See id. We did so because neither the term’s plain language nor the specification supported imposing such a requirement. See id. For the same reasons explained in IPR2015-01401, we maintain our agreement with Petitioner. Under the broadest reasonable construction, a communications network is simply a link between two or more components of the radiation treatment system that allows information to be shared between them.” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager” Claim 57 (and, by dependence, claims 58 and 59) requires “a computing unit, coupled to the rotatable gantry via a communications network, to store the image projection data captured by the flat-panel imager.” We agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001 includes this feature. Jaffray MICCAI 2001 teaches “[p]rototypes of the hardware and software of the system have been constructed.” Ex. 1020, 1077. It further describes “[b]ecause the bone matching can be performed accurately on fairly low resolution CT and the prostate matching only requires a small part of the cone-beam CT volume, the complete image analysis can be performed in less than 10 s on a 700 MHz PC.” Id. at 1078. As Petitioner’s expert, Dr. Hamilton, explains, because Jaffray MICCAI 2001’s computing unit performs image reconstruction, it “necessarily stores the projection image data captured by the flat-panel imager.” Ex. 1037 ¶ 20 (citing Ex. 1020, 1077; Ex. 1022 ¶ 162). Further, as Dr. Hamilton, explains, “[t]he outcome of [the computing unit’s] analysis is used with treatment planning data to control the treatment delivery,” which “necessarily requires controlling the gantry.” Id. (citing Ex. 1020, 1077; Ex. 1022 ¶ 163); see also Ex. 1020, 1077 (describing that “[t]he selected treatment plan will be delivered by means of a step-and-shoot intensity delivery technique using 5 beam angles and about 20 treatment segments”).” slip op. at 12

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

    “In addition to demonstrating these alternative prior-art disclosures, Petitioner identified sufficient reasons that would have prompted a person of ordinary skill in the relevant field to combine the elements as the claimed invention does. See KSR, 550 U.S. at 418. Specifically, Petitioner explains—with support from Dr. Hamilton—that one skilled in the art would have been motivated to combine the computers disclosed in Jaffray MICCAI 2001, Jaffray JRO 1999, and Jaffray 2001 into an interconnected network because doing so would increase the efficiency of delivering radiation therapy to a patient. See Pet. 38 (citing Ex. 1022 ¶ 181). In addition, Petitioner explains a person of ordinary skill in the art would have been motivated to combine the claimed radiation energies (as disclosed in Jaffray JRO 1999) with the linear accelerator of Jaffray MICCAI 2001 to achieve a therapeutic response. Id. at 39 (citing Ex. 1022 ¶ 181). Thus, in addition to demonstrating the necessary disclosures in the prior art, Petitioner articulated sufficient reasoning with some rational underpinning to support the legal conclusion that its proffered combination would have been obvious to one of ordinary skill in the art. In disputing obviousness based on Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999, Patent Owner relies on its narrow construction for “communications network” as requiring a networking protocol and message routing. See PO Resp. 35–38, 43–45. In particular, Patent Owner asserts that, given added complexity associated with addressing data, communications networks are slower and more complex than dedicated physical connections, so one skilled in the art would not have been motivated to use a communications network as opposed to a direct connection. See id. at 43–44. We find Patent Owner’s arguments unpersuasive because, as explained above, we do not construe a communications network as requiring a networking protocol to selectively route messages to their intended devices, as Patent Owner contends. Instead, a communications network requires only a link between two or more components that allows information to be shared between them. Based on our review of the arguments and evidence in the Petition, Response, and Reply, we determine Petitioner has shown, by a preponderance of the evidence, that claims 57–59 are unpatentable under 35 U.S.C. § 103(a) over Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999. 3. Anticipation of Claims 57–59 Based on the Jaffray Publication” slip op. at 17

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Petitioner contends “[t]o the extent they are not found to be anticipated by the Jaffray Publication, claims 57–59 are unpatentable because they would have been obvious over the Jaffray Publication in view of the general knowledge of a person of ordinary skill in the art.” Pet. 54– 55. In light of our findings on anticipation based on Jaffrey Publication, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claims 57–59 would have been obvious over the Jaffray Publication. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that ‘anticipation is the epitome of obviousness.’”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”).” slip op. at 22

  Patent outcomesUS 7,945,021 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,021
• Elekta, Inc. v. Varian Medical Systems, Inc.All claims unpatentable
  PTAB · Jun 16, 2017 · IPR2016-00476 · APJ Garth D Baer · IPR · Final written decision

  Claim 6 is unpatentable over Jaffray MICCAI 2001 under §§ 102(a), 102(b), and 103(a); claims 1–3, 7–10, and 12 are canceled on Patent Owner’s granted motion to amend.

  RulingsFinal written decision

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

    “construction in light of the specification of the patent in which [they] appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its “ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We construe only those claim terms necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). 2. “communications network”” slip op. at 7

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

    “i. Jaffray MICCAI 2001 Teaches “a translatable treatment couch coupled to the rotatable gantry via a communications network” Claim 6 requires “a translatable treatment couch coupled to the rotatable gantry via a communications network.” As Petitioner explains, the linear accelerator in Jaffray MICCAI 2001 is an Elekta SL-20. Pet. 16 (citing Ex. 1021, 1076; Ex. 1026 ¶ 167), 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1026 ¶¶ 156, 167). A technical note describing the SL-20 explains as follows: “The hardware/software interaction of the SL-20 makes it particularly suitable for automated data collection. Communication between the control processor and the accelerator, gantry and patient couch is handled by a pair of high-speed serial links. These are daisy-chained through three separate control areas distributed throughout the machine.” Ex. 1015, 220. “[R]ecourse to extrinsic evidence is proper to determine whether a feature, while not explicitly discussed, is necessarily present in a reference.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1328 (Fed. Cir. 2001). In light of Exhibit 1015, we agree with Petitioner one skilled in the art would understand Jaffray MICCAI 2001’s translatable treatment couch and rotatable gantry are coupled via a communications network—i.e., a link between the two components that allows information to be shared between them. See Pet. 24 (citing Ex. 1021, 1076, Fig. 1; Ex. 1015, 220; Ex. 1026 ¶¶ 156, 167); see also Reply 7–12; Ex. 1031 ¶¶ 19– 29.” slip op. at 10

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

    “Petitioner asserts “to the extent [claim 6 is] not found to be anticipated by Jaffray MICCAI 2001, [claim 6] would have been obvious in view of Jaffray MICCAI 2001.” Pet. 27. In light of our findings on anticipation based on Jaffray MICCAI 2001, and absent any assertions of secondary considerations supporting non-obviousness, we are persuaded Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 6 would have been obvious over Jaffray MICCAI 2001. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that anticipation is the epitome of obviousness.”); cf. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) (distinguishing anticipation from obviousness because “obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation”). 3. Anticipation of Claim 6 Based on the Jaffray Publication” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable

    “We agree with Patent Owner that using a computer-controlled treatment couch does not necessarily mean the treatment couch is connected to the gantry via a communications network, as claim 6 requires. See PO Resp. 28. As Patent Owner explains, controlling the couch with a computer “says nothing about how, if at all, the table would be coupled to the rotatable gantry.” Id. In addition, Petitioner’s standard-feature argument, even if correct, is not enough to show the Jaffray Publication necessarily discloses the disputed communications network feature. See Rexnord Indus., LLC v. Kappos, 705 F.3d 1347, 1355 (Fed. Cir. 2013) (explaining that “anticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation”). Thus, we find Petitioner has not shown the Jaffray Publication expressly or inherently discloses “a translatable treatment couch coupled to the rotatable gantry via a communications network,” as claim 6 requires, and consequently has not met its burden to show the Jaffray Publication anticipates claim 6. 4. Obviousness of Claim 6 Based on the Jaffray Publication” slip op. at 14

  Patent outcomesUS 8,116,430 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,116,430
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-01025 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable because the cited references did not adequately account for the claims’ session limitations.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Amazon.Com, Inc. / Amazon.Com, LLC et al. v. Zitovault, LLCNo claims unpatentable
  PTAB · Apr 11, 2017 · IPR2016-00021 · APJ Daniel N Fishman · IPR · Final written decision

  Petitioner did not prove claims 1, 3, 5–8, and 10 unpatentable: the asserted grounds did not adequately identify sessions with recognizable beginnings and ends.

  RulingsFinal written decision

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

    “We are persuaded that our preliminary interpretation of “session” in our Decision on Institution is, at least in some respect, overly broad. Independent claims 1, 6, 7, and 10 each refer to “sessions” in plural, and independent claim 7 refers to “simultaneous” sessions. Thus, the term “session” must be understood, at least, in such a manner as to allow multiple sessions to be distinguished from one another. Although independent claim 5 does not recite “sessions” in plural, the same term should be construed consistently across all claims. Accordingly, we conclude that there must be sufficient delineation within a proper construction of “session” that separates a “session” between one client and one server and a different “session” when one of the client and server are replaced, and that separates multiple sessions from each other even between the same pair of client and server. During Oral Hearing there were extensive discussions regarding proper construction of “session.” See Tr. 7:9–22:18, 43:11–65:15, 74:21–76:13. At Oral Hearing, counsel for Petitioner agreed that “session” should be understood as communications having a recognizable beginning and a recognizable end. Id. at 10:13–16 (“Of course a session has a beginning and an end. I think that is axiomatic in a session. I think that is how Dr. Rubin defined it in his declaration”); see also id. at 12:21–13:5, Ex. 1005 ¶ 41. Patent Owner also agreed that if the construction of session is made to include a recognizable beginning and a recognizable end, that would be a proper construction for the term:” slip op. at 12

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

    “We agree with Patent Owner that Petitioner has failed to identify what constitutes a “session” in Feinberg in accordance with a proper construction of “session.” That proper construction of “session” is set forth above and has been agreed to by the parties. Tr. 10:13–16, 53:13–54:10. We state it again here: “a set of transmitters and receivers, and the data streams that flow between them wherein each data stream flowing between the transmitters and receivers has a recognizable beginning of the data stream transmission and a recognizable end of the data stream transmission.” Petitioner identifies Feinberg’s disclosure of forwarding (shunting) received requests from the primary server to secondary servers (for purposes of load balancing) teaches the recited “communication between the main server and agent server enlists additional agent servers to support incremental secure sessions in response to maintaining performance at a desired level.” Pet. 21–23 (emphasis added). The analysis is excessively generic for the claim recitation of “incremental secure sessions.” It is uncertain what Petitioner regards as a session in Feinberg much less how it begins and how it ends. It is unexplained by Petitioner whether a request in Feinberg begins a session, or something else in Feinberg begins a session. We decline to speculate in that regard. It is Petitioner who bears the burden of proof, and who must account for all the limitations in a claim. In that regard, we note further that it is insufficient for Petitioner to present only dots that may be connected in some unspecified manner to yield the claimed invention. Instead, Petitioner must make a sufficient connection through the dots to demonstrate a full accounting of the claimed invention. Petitioner had ample notice of the possibility of a narrower interpretation of “session.” See PO Resp. 7–11, 23–24. Indeed, Petitioner responded to that possibility by referring to its own expert’s testimony that the beginning and end of a session may be signified in a variety of forms. Pet. Reply 2. See Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (“The critical question for compliance with the APA and due process is whether [the parties] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at [the] hearing’”) (internal citation omitted). Nevertheless, Petitioner’s Reply still does not specifically identify a “session” within Feinberg that accounts for what constitutes a session in Feinberg, including when it begins and ends. Claim 10 recites, in pertinent part, “sharing spare CPU cycles of the computer network for encrypting and decrypting communication to provide N simultaneous secure session[s] among said network of computers.” Petitioner’s analysis with respect to the recitation of “N simultaneous secure session[s]” is deficient for the same reasons we discussed above with respect to the recitation of “incremental secure sessions” in claim 6. For the above reasons, we are not persuaded Petitioner has established, by a preponderance of the evidence, that claims 6 and 10 are anticipated by Feinberg.” slip op. at 22

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

    “that the system supports “incremental secure sessions.” The Petition relies on Feinberg for disclosing such sessions, presenting the same arguments as those it presents for claim 6. See Pet. 33–34. Patent Owner argues Feinberg fails to disclose sessions for the same reasons as those that Patent Owner presented with respect to claim 6. See PO Resp. 36–37. Petitioner’s Reply asserts essentially the same arguments for claim 1 as it does for claim 6 regarding “incremental secure sessions.” Pet. Reply 17. Petitioner does not rely on Bhaskaran to alleviate the above-identified deficiency in the analysis of Feinberg with respect to claim 6. The standard for obviousness under 35 U.S.C. § 103(a) is what would have been taught or suggested to the ordinarily skilled artisan with based on the references. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious and, the Court has noted that, the analysis supporting an obviousness assertion should be made explicit. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). A “legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006). As discussed supra, Petitioner failed to account adequately for the recited “sessions.” Therefore, Petitioner has failed to establish by a preponderance of the evidence that independent claims 1, 6, and 10 would have been obvious over Feinberg and Bhaskaran and, for the same reasons, has failed to establish claim 3, dependent from claim 1, would have been obvious over Feinberg and Bhaskaran.” slip op. at 24

  • ExcludeMotion to exclude, deniedDenied

    “Initially, we note Patent Owner’s Motion to Exclude fails to identify the portions of Dr. Rubin’s Declaration that allegedly fail to be based upon sufficient facts or data, that allegedly are the product of unreliable principles and methods, or that allegedly fail to reliably apply sound principles and methods to the facts of the case. There is no requirement for an exact or perfect match between the expert’s experience and the field of the patent. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010). Thus, Patent Owner fails to meet its burden with respect to this Motion to Exclude. See 37 C.F.R. § 42.20(c). Furthermore, regarding the objections under FRE 702, we note that under 37 C.F.R. § 42.65(a), “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” Consequently, this objection more properly goes to the weight to be given Dr. Rubin’s testimony, and not to its admissibility. In any event, Patent Owner’s argument, that Petitioner did not explain the evidentiary weight or standard that was applied by Dr. Rubin, is misplaced. We note that Dr. Rubin is an expert witness, not a fact finder or a tribunal making fact findings. Dr. Rubin need only provide his opinion and, preferably, also provide the underlying reasoning, inclusive of data and facts, in support of his opinion. For the above reasons, Patent Owner’s Motion to Exclude is denied.” slip op. at 27

  Patent outcomesUS 6,484,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,484,257
• Palo Alto Networks, Inc. / Blue Coat Systems, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 16, 2017 · IPR2016-00480 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 14 and 19 were not shown unpatentable because neither Shin nor Poison Java and Brown teaches executable code received at the destination without modification.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “according to the entire disclosure of the ’633 patent specification the executable code is received at the destination without modification. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the specification is “the single best guide to the meaning of a disputed term,” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.”). “The specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (quoting Vitronics, 90 F.3d at 1582, 1584 n. 6). We also confirm the scope of the “executable code” in light of the advantage of the invention, e.g., to protect against malicious code without modifying the executable code, thereby minimizing resources. See Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (construing a ring as permanently attached to the cover because all embodiments read together suggest this relationship and the specification describes the advantages of the unitary structure). Although the specification describes additional advantages, such as not requiring pre-installation of security code within the destination, the claims need not encompass all stated advantages. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). Finally, all the embodiments are consistent with and support the inventors’ characterization of the problem solved: avoiding the resource intensive modification by communicating to the destination the mobile protection code and the detected executable code. See Ex. 1001, 10:39−45; 1:63−3:6; see also O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997) (relying on the consistent disclosure of structures as being either non-smooth or conical and the statements distinguishing prior art where structures were smooth). In light of the disclosure, the plain and ordinary meaning of the disputed claim language emerges: the executable code whose operations are processed by the mobile protection code at the destination is the same as the executable code received, i.e., it undergoes no modification. In sum, we determine that the “executable code” at the destination is not modified.” slip op. at 17

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

    “research at Stanford, and archived by archive.org, shows that the article’s title was listed and that the article was publicly available through the Internet as of April 14, 1998. Ex. 1095. As explained in the affidavit proffered by Christopher Butler, Office Manager of Internet Archive, the URL format for captured website, “19980418130342/http://www-cs-students.stanford.edu/~ishin/research.html,” establishes that the website posting the abstract and the title of the article with a link to the article itself were archived on April 18, 1998 at 13:03:42. Id. The article was available as a PDF file, downloadable from the same page. Id. (identifying in a cover page the URL showing that Ex. 1009 was available from www-cs-students.stanford.edu/~ishin/paper.ps, as of April 18, 1998). We find this evidence credible and undisputed. Finally, there is also undisputed evidence that Dr. Rubin read Shin in 1998. Ex. 2022, 70:20−71:13. Accordingly, we find that Shin was publicly available and sufficiently accessible online to persons interested in applet security no later than April 14, 1998.” slip op. at 19

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

    “We find that Shin’s constant pool is not the same as the IAT embodiment described in the ’633 patent. As stated above, the mobile protection code modifies the IAT at the destination while processing the one or more operations of the executable code. In contrast, Shin’s applet is modified at the proxy server, and its modification constitutes rewriting the bytecode of the applet, which is executable. See Ex. 1009, 2 (“we propose a technique, called bytecode modification, through which we put restrictions on applets by inserting additional bytecode instructions that will perform the necessary run-time tests”), 4 (“modified executable entities are inserted in Java bytecode”). As explained by Shin, the constant pool is part of the class file of the applet. Id. at 5. Further, the bytecode modification is not performed at run-time, like the IAT modification table scenario. See id. at 2 (“HTTP proxy server []modifies classes before they are received by the browser”), 4 (Shin explaining that the “safety mechanism must be applied before the applet is executed”). The differences are significant, for the modification of the applet at the server is precisely the type of modification that the ’633 patent sought to avoid. The applet is undisputedly executable code, and is what Petitioner pointed to in Shin as disclosing executable code. See Pet. 43 (“Shin also discloses that the safeguarding code processes operations attempted by the applet (‘executable code’) . . . .”). By describing that the server modifies the constant pool in the applet, we find that Shin teaches modifying the executable code before the applet is processed at the client browser. Therefore, Petitioner has failed to show by a preponderance of the evidence that Shin teaches or suggests that the applet is “executable code” as we have construed the claim language, supra.” slip op. at 26

  • ExcludeMotion to exclude, deniedDenied

    “and 2048 in general as irrelevant, potentially confusing, and prejudicial. Id. at 8−15. Petitioner’s Motion to Exclude is denied as moot, because that evidence objected to is not relied upon in reaching our determination that Petitioner has not met its burden of showing that claims 14 and 19 are unpatentable.” slip op. at 34

  Patent outcomesUS 7,647,633 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,647,633
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 16, 2017 · IPR2015-01974 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 14 and 19 were not shown unpatentable under either § 103 ground because both relied on modified executable code, contrary to the Board’s construction.

  RulingsFinal written decision

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

    “To conclude, our determination is based on the plain and ordinary meaning of the claims within the context of the specification. First, 7 Similarly, Petitioner relies on testimony from the deposition of Finjan’s expert in the District Court litigation, Dr. Nenad Medvidovic, Exhibit 1100. Reply 5 (citing Ex. 1100). 8 We do not rely on expert testimony also because extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015). according to the entire disclosure of the ’633 patent specification the executable code is received at the destination without modification. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the specification is “the single best guide to the meaning of a disputed term,” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.”). “The specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (quoting Vitronics, 90 F.3d at 1582, 1584 n. 6). We also confirm the scope of the “executable code” in light of the advantage of the invention, e.g., to protect against malicious code without modifying the executable code, thereby minimizing resources. See Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (construing a ring as permanently attached to the cover because all embodiments read together suggest this relationship and the specification describes the advantages of the unitary structure). Although the specification describes additional advantages, such as not requiring pre-installation of security code within the destination, the claims need not encompass all stated advantages. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). Finally, all the embodiments are consistent with and support the inventors’ characterization of the problem solved: avoiding the resource intensive modification by communicating to the destination the mobile protection code and the detected executable code. See Ex. 1001, 10:39−45; 1:63−3:6; see also O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997) (relying on the consistent disclosure of structures as being either non-smooth or conical and the statements distinguishing prior art where structures were smooth). In light of the disclosure, the plain and ordinary meaning of the disputed claim language emerges: the executable code whose operations are processed by the mobile protection code at the destination is the same as the executable code received, i.e., it undergoes no modification. In sum, we determine that the “executable code” at the destination is not modified.” slip op. at 16

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

    “publication or dissemination. See Ex. 1009. Petitioner, however, has provided other evidence establishing that Shin was publicly available no later than April 1998. A printout of the website directed to Mr. Shin’s research at Stanford, and archived by archive.org, shows that the article’s title was listed and that the article was publicly available through the Internet as of April 14, 1998. Ex. 1095. As explained in the affidavit proffered by Christopher Butler, Office Manager of Internet Archive, the URL format for captured website, “19980418130342/http://www-cs-students.stanford.edu/~ishin/research.html,” establishes that the website posting the abstract and the title of the article with a link to the article itself were archived on April 18, 1998 at 13:03:42. Id. The article was available as a PDF file, downloadable from the same page. Id. (identifying in a cover page the URL showing that Ex. 1009 was available from www-cs-students.stanford.edu/~ishin/paper.ps, as of April 18, 1998). We find this evidence credible and undisputed. Finally, there is also undisputed evidence that Dr. Rubin read Shin in 1998. Ex. 2022, 70:20−71:13. Accordingly, we find that Shin was publicly available and sufficiently accessible online to persons interested in applet security no later than April 14, 1998.” slip op. at 18

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

    “We find that Shin’s constant pool is not the same as the IAT embodiment described in the ’633 patent. As stated above, the mobile protection code modifies the IAT at the destination while processing the one or more operations of the executable code. In contrast, Shin’s applet is modified at the proxy server, and its modification constitutes rewriting the bytecode of the applet, which is executable. See Ex. 1009, 2 (“we propose a technique, called bytecode modification, through which we put restrictions on applets by inserting additional bytecode instructions that will perform the necessary run-time tests”), 4 (“modified executable entities are inserted in Java bytecode”). As explained by Shin, the constant pool is part of the class file of the applet. Id. at 5. Further, the bytecode modification is not performed at run-time, like the IAT modification table scenario. See id. at 2 (“HTTP proxy server []modifies classes before they are received by the browser”), 4 (Shin explaining that the “safety mechanism must be applied before the applet is executed”). The differences are significant, for the modification of the applet at the server is precisely the type of modification that the ’633 patent sought to avoid. The applet is undisputedly executable code, and is what Petitioner pointed to in Shin as disclosing executable code. See Pet. 43 (“Shin also discloses that the safeguarding code processes operations attempted by the applet (‘executable code’) . . . .”). By describing that the server modifies the constant pool in the applet, we find that Shin teaches modifying the executable code before the applet is processed at the client browser. Therefore, Petitioner has failed to show by a preponderance of the evidence that Shin teaches or suggests that the applet is “executable code” as we have construed the claim language, supra.” slip op. at 26

  • ExcludeMotion to exclude, deniedDenied

    “and 2048 in general as irrelevant, potentially confusing, and prejudicial. Id. at 8−15. Petitioner’s Motion to Exclude is denied as moot, because that evidence objected to is not relied upon in reaching our determination that Petitioner has not met its burden of showing that claims 14 and 19 are unpatentable.” slip op. at 34

  Patent outcomesUS 7,647,633 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,647,633

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.