- Target Corporation v. Proxicom Wireless, Inc.All claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00904 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1, 5–8, 10, 12, 14, 15, 18, and 20–22 are unpatentable as anticipated by or obvious over Eagle, or obvious over Eagle and Mgrdechian.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“V. CLAIM CONSTRUCTION Throughout the proceedings, neither party proposed a special definition or explicit construction of any claim term. See Dec. to Inst. 11; PO Resp. 9–10. For purposes of this Decision, we apply the plain and ordinary meaning to the claim language.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther
“server performing the steps of.” Pet. 24–25. Petitioner cites Eagle as disclosing a server utilizing a large area wireless network, such as a cellular phone network or the Internet, to exchange information between the server and the BlueAware application running on the Bluetooth enabled phones, e.g., a Requester device (a first wireless device) and an identified device (a second wireless device) that identify themselves with unique identification codes. Id. (citing Ex. 1004, code (57), ¶¶ 4, 9–10, 19–20, 22, 48–49, 51; Ex. 1003, Williams Decl. ¶¶ 104–106). Patent Owner does not respond explicitly to Petitioner’s contentions concerning the preamble of claim 1. Based on the evidence of record, we are persuaded that Petitioner has demonstrated Eagle discloses the preamble of claim 1.4 b) Claim Limitation 1.a Petitioner identifies claim limitation 1.a as reciting “receiving first identification information from the first wireless device, the first identification information communicated from the first wireless device to the server via the wireless Wide Area Network.” See Pet. 26–27. Petitioner cites Eagle as disclosing that each time a Requester device (the claimed first device) detects a new device, it communicates to a central server (the claimed server), using a long-range cellular network (the claimed wireless Wide Area Network), a notification message (notification message sent from the device to be received by the server), containing its own identifier, such that the server receives the Requester ID (the claimed first identification 4 We need not decide whether the preamble is limiting because Petitioner has shown that Eagle discloses the recitation in the preamble. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“comparing the information disclosure policy data and the first identification information” (the comparing step), as recited in claim limitation 1.f. See PO Resp. 15–32. As a threshold matter, Patent Owner contends that by recognizing Eagle does not explicitly disclose the claimed comparison and by relying on what a person of ordinary skill would have understood, the Petition effectively acknowledges that Eagle does not support Petitioner’s anticipation claim 1. Id. at 16–17. To the extent Patent Owner argues that Petitioner’s reliance on a person of ordinary skill’s understanding of the reference precludes anticipation, Patent Owner’s argument is unavailing. As discussed above, whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan, Dayco Prods., 329 F.3d at 1368, and “the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” In re Baxter Travenol, 952 F.2d at 390 (emphasis omitted). Based on Petitioner’s mapping of Eagle to claim 1, Patent Owner slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“been motivated to combine the teachings of Eagle with those of Mgrdechian because in Eagle the device log of the requesting device, not the server, already limits re-sending identifiers based on a timestamp that precludes sending messages to the server during a specific time period. PO Resp. 44. As Petitioner notes, however, because Eagle’s device logs are periodically removed, resulting in multiple messages being sent to the server as the devices react over time, a person of ordinary skill would have had reason to employ Mgrdechian’s “more sophisticated way for determining whether detecting a new device warrants transmission of a message to the server.” Pet. Reply. 22 (citing Pet. 53–59; Ex. 1003, Williams Decl. ¶¶ 187–196). Thus, we agree with Petitioner that a person of ordinary skill would have had reason to look to Mgrdechian to improve Eagle’s performance by reducing the number of messages required. “portable profile” described at column 15, line 46–column 16, line 2 of the reference, which is different from the profile discussed by Mgrdechian at column 12, lines 36–44 because the portable profile is not sent by the server. PO Resp. 48. According to Patent Owner, Petitioner’s citations of Mgrdechian’s portable profile does not support Petitioner’s theory because that profile information is not sent from the server, as required by claims 8, 14, and 21. Id. at 49–50. Patent Owner contends that Petitioner’s analysis of Mgrdechian ignores the claim requirements that the server return information that limits re-sending of identifiers already reported by the first wireless device (claim 8 and 22) and limit actions previously performed by the first wireless device (claim 14). PO Sur-reply 23–24. Although Petitioner cites to a portion of Mgrdechian that discusses portable profiles, Petitioner contends that Patent Owner’s emphasis on Mgrdechian’s portable profiles being retrieved from queried devices rather than a central server constitutes a strawman argument because the Petition does not rely on Mgrdechian’s disclosure of portable profiles retrieved from a second device. Pet. Reply 23–24. Instead, Petitioner asserts that Mgrdechian’s relevant teachings are (1) the system’s prevention of automatically retrieving profile information that is already available locally and (2) the earlier disclosure of storing profile information retrieved from the server. Pet. Reply 23–24 (citing Pet 54–55; Ex. 1005, 12:18–44; Ex. 1003, Williams Decl. ¶¶ 190–191). According to Petitioner, it was well known for a device to refer to cached information before requesting information from a server. Id. at 24 (citing Ex. 1003, Williams Decl. ¶¶ 96– 100, 185–198). saving profile information received from the server about the second device for later use.” Pet. 54 (citing Ex. 1005, 12:23–28; Ex. 1003, Williams Decl. ¶ 97). Noting that Eagle recognizes the benefit of limiting transmissions, e.g., to those devices that have newly come within range, Petitioner cites Mgrdechian as teaching “implementation details for determining whether the detection of a new device warrants transmission of a message to the server.” Id. at 55–56 (citing Ex. 1003, Williams Decl. ¶ 99). The subject matter Petitioner cites from Mgrdechian states that a user may select specific target devices for further and subsequent queries, based on the content of initial profile information, rather than retrieving profile information for all device IDs. Ex. 1005 15:46–67. Petitioner’s analysis is based on the first device receiving and saving information from the server during an initial encounter and based on that saved information, the first device declining to send messages to the server in subsequent encounters. We agree with Petitioner’s analysis that this combination of Eagle and Mgrdechian discloses the features recited in claims 8, 14, and 22 because the decision made locally by the first device to limit re-sending of identifiers is based on information previously received from the server. Having considered all the evidence and arguments of record, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Eagle and Mgrdechian and that the combined teachings would have disclosed the limitations of claim 8, 14, and 22 to a person of ordinary skill in the art. Therefore, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 8, 14, and 22 would have been unpatentable as obvious over the combined teachings of Eagle and Mgrdechian.” slip op. at 43
Patent outcomesUS 7,936,736 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,936,736 - Target Corporation v. Proxicom Wireless, LLCAll claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00932 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 9, 22, 28, 35, 38–41, and 51 are unpatentable: claims 9, 22, and 51 over Perttila, and claims 9, 22, 28, 35, and 38–41 over Perttila and Swartz.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 15–16. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”6 Id. at 16 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“As we noted in the Institution Decision, Perttila’s merchant-media arrangement includes RFID tag 38 (or, alternatively, a Bluetooth link). See Inst. Dec. 19. Petitioner maps the short-range transmitter to the recited second device (see Pet. 28; Inst. Dec. 19) and maps the electronic coupon to the recited identity or related information (see Pet. 30; Inst. Dec. 19). Petitioner maps the billboard and, separately, its contents to the recited entity or object, which is in proximity to the short-range transmitter. See Pet. 30; Pet. Reply 7–8; Inst. Dec. 19. Perttila’s server uses the merchant ID code to generate an “electronic coupon that corresponds to the content promoted by the billboard.” E.g., Ex. 1006 ¶¶ 27, 33. Thus, Perttila supports Petitioner’s contentions. Patent Owner equates “merchant-media arrangement” as a billboard; that is, a single entity. In the Institution Decision, we noted that the merchant-media arrangement includes a billboard and the RFID tag or Bluetooth link is “co-located” at the merchant-media arrangement. Inst. Dec. 19–20. Petitioner maps the “short-range communicator,” which it defines as the RFID tag or Bluetooth link, to the recited second device. Pet. Reply 7; see also Pet. 30–31. Thus, we disagree with Patent Owner’s assertion that the Petition maps the merchant media arrangement, as a singular entity, to both the recited second device and the recited entity or object. We further disagree with Patent Owner’s assertion that the electronic coupon does not correspond to the content promoted by the billboard. See PO Resp. 40–41. Perttila discloses that the “downloadable electronic coupon . . . corresponds to the content promoted by the billboard.” Ex. 1006 ¶ 27 (emphasis added). Perttila’s remote server uses the merchant-media ID code “to associate the promotional information with an e-coupon to be provided to the user visiting this billboard location.” Id. ¶ 28.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“coupon void] request from the redemption data-processing station 54, the source server 24 performs coupon-verification and credit actions and updates its coupon-database accordingly.” Ex. 1006 ¶ 42 (emphasis added). Petitioner relies on Swartz to teach credit actions to be performed by Perttila’s server. E.g., Pet. 50 (“charging a customer’s ‘credit account’ associated with the customer’s mobile device”). Petitioner’s declarant opines that “Perttila itself recognizes the benefits of a central server handling ‘coupon-verification and credit actions,’ and a [person of ordinary skill in the art] would have understood that Swartz’s teachings provide known implementation details for such an arrangement.” Ex. 1003 ¶ 100. Mr. Williams testifies that an ordinarily skilled artisan would have understood that modifying Perttila’s server to provide the credit actions taught by Swartz “would have improved Perttila’s ‘electronic commerce arrangement.’” Id. Patent Owner’s declarant testifies that “Petitioner’s arguments for why a POSITA would have been motivated to combine [Perttila and Swartz] are not true to the disclosures of Perttila, and imply that the phrases used in Perttila have a different meaning than they do in the context of Perttila.” Ex. 2010 ¶ 94. Dr. Foley, however, does not address Perttila’s disclosure of its server performing “credit actions,” which is the basis for Mr. Williams’s opinion that it would have been obvious to incorporate Swartz’s teachings into Perttila’s system. See, e.g., Ex. 1003 ¶ 100; Pet. 48 (citing same). We credit the testimony of Petitioner’s declarant, which relies on Swartz to provide details regarding the credit actions performed by Perttila’s server and which Patent Owner’s declarant does not address squarely. Therefore, we determine that Petitioner has set forth reasoning with rational underpinning explaining why it would have been obvious to combine the teachings of Perttila and Swartz.” slip op. at 31
Patent outcomesUS 8,090,359 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,090,359 - Target Corporation v. Proxicom Wireless, LLCSome claims unpatentablePTAB · Nov 8, 2021 · IPR2020-00931 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, and 52–55 are unpatentable over Perttila alone or Perttila and Insolia; claims 37 and 43 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted trial based on all asserted claims and grounds of unpatentability as follows: Claims Challenged 35 U.S.C. § Reference(s) 1–5, 14–18, 27, 31, 36, 37, 42, 43, 102(b)3 Perttila 48, 52, 55 1–5, 14–18, 27, 31, 36, 37, 42, 43, 103(a) Perttila 48, 49, 52, 55 27, 31, 53, 54” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term. 2. “wireless device” Patent Owner argues that, as recited in the challenged claims, “wireless device” “refer[s] to wireless communication capabilities, not that a wireless device would be precluded from having any external wires whatsoever.” PO Resp. 19. However, Patent Owner concedes that construction of “wireless device” is “not necessary to resolve the dispute here.” Id. Petitioner argues that “‘wireless device’ should be construed to require a device without external wires,” noting that the claims of the ’359 patent recite a “wireless device” rather than a “wireless communication device.” Pet. Reply 5–6. However, Petitioner also concedes that “no construction of this term is necessary.” Id. at 5. No construction of this term is necessary. The parties both agree that no construction is needed, and as explained below our decision does not depend on a construction of this term.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“As noted above, Petitioner maps Perttila’s disclosure of “electronic coupon information including various offerings” to the recited “list of goods” and notes that the merchant-media device can be located in a store where the advertised goods are sold. Pet. 51–52 (citing Ex. 1006 ¶¶ 26, 39); see also Ex. 1003 ¶ 177. However, neither Petitioner nor its declarant identifies adequately any “list of goods” that Perttila’s remote server delivers to the first wireless device. At best, Petitioner and its declarant describe an iterative process whereby a user interacts with a plurality of tags or beacons in a store to receive multiple electronic coupons. Pet. Reply 17–18; Ex. 1003 ¶ 177. However, Petitioner fails to explain adequately how delivering coupons one at a time in an iterative process constitutes delivering a list of goods as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a restaurant menu. Pet. 52–53 (citing Ex. 1006 ¶¶ 26); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending a restaurant menu constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that, in embodiments, the billboard may promote a food product and the user’s interaction with the billboard results in the server sending “a restaurant menu or a recipe involving that particular food or food type.” Ex. 1006 ¶ 26. However, neither Petitioner nor its declarant explain adequately how this constitutes a step in a process for an electronic commerce transaction. Notably, Petitioner and its declarant fail to identify any discussion or suggestion in Perttila of the user interacting with the menu after it has been delivered. Nor do we see any such disclosure in Perttila. Rather, Perttila merely discloses sending a restaurant menu as part of “electronic coupon information”: “In another application, the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for example, a restaurant menu or a recipe involving that particular food or food type.” Id. Moreover, we note that Petitioner does not propose to modify Perttila’s system in some manner such that a user could interact with the delivered menu as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a movie ticket. Pet. 52–53 (citing Ex. 1006 ¶¶ 44–50); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending an electronic movie ticket constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that its system may be used to purchase a movie ticket that is redeemed “at a time much later than the time when the electronic coupon is received.” Ex. 1006 ¶ 44. Perttila discloses purchasing the movie ticket and later using a menu displayed on the user’s mobile phone to activate and validate the ticket at the theater. E.g., id. ¶¶ 46–50. Petitioner fails to explain persuasively how delivering an electronic movie ticket in the manner disclosed by Perttila constitutes delivering a list of goods as a step in a process for an electronic commerce transaction.” slip op. at 38
Patent outcomesUS 8,090,359 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,090,359 - PTAB · Oct 7, 2021 · IPR2021-00607 · APJ Joni Y Chang · IPR · Institution
The Board denied institution for claims 14–38 under § 325(d), finding the same or substantially the same arguments were previously presented and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“[U]nder § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails 7 to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8, 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Fourth, Petitioner argues that, because the subject matter added from Chu ’886 was not included in any of the applications in the ’140 patent’s priority chain before it was added by amendment in the ’138 application and then filed with the U.S. Application No. 13/294,108 (“the ’108 application”), the earliest possible priority date for any of the ’140 patent claims relying on this subject matter for written description support under 35 U.S.C. § 112, ¶ 1, is the date of filing the ’108 application, November 10, 2011. Pet. 14−17. However, the amendments to the ’138 application were proper because, as discussed above, “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential material, Patent Owner submitted an amendment to explicitly set forth the material in the specification,” in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p), 8th Ed. Rev. 8 (July 2010). See Prelim. Resp. 26−30. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’140 patent’s priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’140 patent is November 10, 2011. For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that “the Examiner erred by not realizing that Chu 21 ’330 and Chu ’886 qualify as prior art under 35 U.S.C. § 102(b) and are material to the patentability of the claims in the ’140 Patent.” Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton, Dickinson, Paper 8, 24.” slip op. at 21
§ 102 anticipationDiscretionary denial - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments LLC D/B/A Brazos Licensing And DevelopmentInstitution deniedPTAB · Oct 5, 2021 · IPR2021-00694 · APJ John D Hamann · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, Petitioner has not demonstrated a reasonable likelihood of success in challenging independent claim 1 as being anticipated by Hwang. In addition, the Petition does not present any information with respect to dependent claims 2, 3, 6, 8–10, 12, 13, and 15 that addresses the deficiencies discussed above. Pet. 55–73. Thus, Petitioner has not demonstrated a reasonable likelihood of success in challenging claims 2, 3, 6, 8–10, 12, 13, and 15 as being anticipated by Hwang.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim terms need to be construed by the Board at this time.” Pet. 23. Patent Owner does not identify any claim terms for construction. Prelim. Resp. 24–25. Accordingly, we determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We find that this sentence from Hwang is unavailing. Simply put, this sentence fails to disclose anything about how Hwang manages a mobile station’s active set with respect to establishing a new link. Ex. 1005 ¶ 30. Instead, this sentence explicitly discloses that a hard handover is used for the uplink synchronous timing procedure, but does not disclose that a hard 9 Patent Owner sometimes argues that “the Petition fails to establish it is more likely than not” that Hwang discloses the disputed limitation. See, e.g., Prelim. Resp. 25. This is not the standard, however, for deciding whether to institute an inter partes review. See 35 U.S.C. 314(a). Rather, we apply here a reasonable likelihood standard in evaluating the Petition. Id. handover is used for establishing a new link. Id. Notably, the sentence Petitioner relies upon is immediately preceded by the following sentence: “[I]n order to improve the method of controlling the handover, a hard handover means of the uplink synchronous timing essentially required in the uplink synchronous transmission scheme should be added together with the related art soft handover method.” Id. (emphasis added). In other words, Hwang discloses using both soft and hard handovers. See, e.g., id. at code (57), ¶¶ 30, 53, 64. Hwang characterizes its use of both soft and hard handovers for its data flow procedure of a preferred embodiment as follows: The data flow shown in F[igure] 7 can be classified into 1) a soft handover procedure for setting the radio link in the target base station 333 as shown in step 501, 2) a hard handover procedure for converting the synchronous mode, and 3) a soft handover procedure for releasing the radio link of the source base station 335 as shown in step 539. Id. ¶ 64. Similarly, the sentence Petitioner quotes from paragraph 30 discloses using Hwang’s hard handover procedure for converting the synchronous mode, and using Hwang’s soft handover procedures for setting and releasing radio links. Compare id. ¶ 30, with id. ¶ 64.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“VI. REMAINING GROUNDS Petitioner argues that the combination of (i) Hwang, Kim, and TS25.301 renders dependent claims 4 and 5 obvious; (ii) Hwang and Kim renders dependent claim 7 obvious; and (iii) Hwang and Miklos renders dependent claims 11 and 14 obvious. Pet. 73–90. For these grounds, Petitioner relies on its showing for independent claim 1 from which claims 4, 5 7, 11, and 14 depend. Id. As we find above, however, the Petition fails to show a reasonable likelihood that Hwang teaches independent claim 1. See supra Section V(B). Petitioner’s showing for the remaining grounds do not cure the deficiencies discussed above. See Pet. 73–90. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of success in challenging these dependent claims as being obvious over these additional grounds.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,489,929 - PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), in “determining whether to institute [an inter partes review], 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.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25
§ 102 anticipation§ 103 obviousnessDiscretionary denial - Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentablePTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision
Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29
Patent outcomesUS 10,003,553 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,003,553 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Some claims unpatentablePTAB · Jul 16, 2020 · IPR2019-00152 · APJ Neil T Powell · IPR · Final written decision
Claims 15 and 20 are unpatentable as anticipated by Picard; claims 1–14 and 16–19 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of our analysis below, we need not construe expressly any claim language to resolve the parties’ patentability dispute. The Petition’s first challenge asserts obviousness of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara. Pet. 18–39. As explained in greater detail below in Section III.B.3, this challenge rests on a contention that it would have been obvious to modify Picard to use telecentric optics like those taught in Ishihara. Id. at 32–38. With respect to the challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara, the Petition does not explain any theory of unpatentability that does not rely on the assertion that it would have been obvious to modify Picard with telecentric optics based on Ishihara. Id. at 18–39. Thus, the merits of this challenge inextricably depend on whether Petitioner has demonstrated adequately that it would have been obvious to modify Picard with telecentic optics based on Ishihara. For the reasons explained below in Section III.B.3, Petitioner has not done so. Therefore, Petitioner’s challenge of claims 1, 2, 7, 8, 9, and 14 over Picard and Ishihara fails for reasons unrelated to claim construction.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree that the law does not require Petitioner to show a person of ordinary skill in the art would have viewed the proposed modification as the most preferred or desirable approach. The law does, however, require Petitioner to show not only that a person of ordinary skill in the art could have combined the references in the proposed manner, but that a person of ordinary skill in the art would have had a reason to combine the references’ teachings in the proposed manner. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis added) (citation omitted) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Here, Petitioner does not do so.” slip op. at 25
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, Picard expressly discloses that the embodiment discussed in connection with Figure 8 includes the components and features shown and discussed in connection with Figure 3, plus all of the components and features shown and discussed in connection with Figure 8. Accordingly, the Petition cites to Picard’s discussions of Figures 3 as providing details regarding certain components and features that Picard discloses are also included in the embodiment of Figure 8. Pet. 20–23, 26–30, 39–41. In view of Picard’s express teaching to combine the features of Figures 3 and 8 and explanation of how they should be combined (Ex. 1003, 24:9–17) and Petitioner’s reliance on these same features to show anticipation (Pet. 20–23, 26–30, 39–41), we find no merit in Patent Owner’s argument that Petitioner does not identify any motivation to combine Picard’s discussions of Figures 3 and 8.11 See Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016) (“[A] reference need not always include an express discussion of the actual combination to anticipate. . . . Instead, a reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.”) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F. 3d 1376, 1383 (Fed. Cir. 2015)). In sum, Petitioner demonstrates by a preponderance of the evidence that Picard anticipates claims 15 and 20.” slip op. at 32
- Strike new argumentNew argument disregardedDecided for patent owner
“have foreseen Patent Owner’s argument does not justify its insufficient explanation and lack of evidence in the Petition. As Patent Owner argues, its ITC brief, filed approximately a month before the Petition was filed, provided effective notice of Patent Owner’s position that there would have been issues using Gmitro’s fiber-optic bundle to carry the plurality of light beams used in Tiziani. Id. Moreover, even without such express notice, Petitioner should have recognized the requirement that its Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Petition was also required to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a)(2). The Petition fails to meet these requirements with respect to its assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Gmitro’s fiber-optic bundle with Tiziani’s confocal imaging system and microlens array. It is “improper for a reply to present new evidence (including new expert testimony) that could have been presented in a prior filing.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 74– 75 (citing Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365–69 (Fed. Cir. 2016)). Petitioner does not provide any persuasive reason that the evidence it presented with its Reply to bolster its assertion of a reasonable expectation of success could not have been provided with the Petition. Accordingly, we find that Petitioner exceeded the proper scope of a reply with its newly presented arguments on pages 24– 27 of the Reply and with the its new citations of portions of the ’901 Patent (Ex. 1001, 5:46–48, 5:52–58, 6:2–6, 7:62–8:13, Fig. 1A), Picard (Ex. 1003, 25–26), Gmitro’s title (Ex. 1005, title), Dr. Sergienko’s new testimony (Ex. 1037 ¶¶ 23–28), and Exhibits 1038 and 1039. For all of the foregoing reasons, Petitioner has not carried its burden of showing that claims 1, 2, 7–9, 14, 15, and 20 would have been obvious over Tiziani, Gmitro, and Ishihara.” slip op. at 47
Patent outcomesUS 9,615,901 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 9,615,901 - Cisco Systems, Inc. v. Centripetal Networks, Inc.Some claims unpatentablePTAB · May 18, 2020 · IPR2018-01760 · APJ J John Lee · IPR · Final written decision
Claims 1–7, 10–12, 14–21, 24, and 25 are unpatentable as obvious over Sourcefire; claims 8, 9, 13, 22, and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Response, Patent Owner does not dispute Petitioner’s definition of the level of skill in the art.3 Based on the complete trial record, we find 3 Dr. Orso testified to a slightly different description of the level of skill in the art (Ex. 2002 ¶ 36), but Patent Owner did not argue during trial that Dr. Orso’s description should be adopted instead of Petitioner’s description and waived any such argument as a result. See In re NuVasive, Inc., 842 Dr. Staniford’s testimony credible and persuasive (Ex. 1003 ¶¶ 21–24), and we adopt Petitioner’s definition as a result. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“an unexpired patent are given their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b) (2018); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). In the Decision on Institution, we preliminarily construed the term “network-threat indicator” as an “indicator that represents the identity of a resource associated with a network threat.” Inst. Dec. 8. During trial, neither party disputed this preliminary construction. See PO Resp. 25; Pet. Reply 7–8; Tr. 10:22–11:9. We do not discern any evidence in the full record after trial indicating that this construction is incorrect or should be modified. Moreover, the Specification supports this construction, indicating that “network addresses, ports, fully qualified domain names (FQDNs), uniform resource locators (URLs), uniform resource identifiers (URIs), or the like” are examples of “network-threat indicators.” Ex. 1001, 3:18–26. Thus, we apply this construction in this Decision.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Based on the above facts and case law, we conclude that Sourcefire was publicly accessible. The evidence of record indicates that the Sourcefire 3D System was publicly marketed and sold, and that the Sourcefire reference was actually distributed to over 500 customers of the Sourcefire 3D System. Ex. 1005 ¶¶ 11, 19; Ex. 1042 ¶¶ 5–9. This vastly exceeds the distribution to six people in MIT and distribution of 80 copies in Garrett. Record evidence also supports Petitioner’s contention that the customers who received Sourcefire included entities interested in network security products, including persons of ordinary skill in the art. See Ex. 1042 ¶ 9; see also Ex. 1004, 1, 32–33 (identifying Sourcefire as a “User Guide” and indicating Sourcefire provides information for network administrators); Ex. 1005 ¶ 5 (indicating Sourcefire was drafted in consultation with, and reviewed by, engineers who designed the Sourcefire system). Moreover, similar to MIT and as discussed in Medtronic, the record indicates that the recipients of Sourcefire were not subject to confidentiality requirements restricting use or further distribution. See Ex. 1004, 2 (Sourcefire copyright page stating, “You may use . . . and otherwise copy and distribute [Sourcefire] solely for non-commercial use”).5 Although Patent Owner asserts that MIT and Klopfenstein are distinguishable because they involved “the free distribution of academic documents to conference and meeting attendees” (PO Sur-reply 7), case law indicates that distribution to commercial entities also may be sufficient. See Garrett, 422 F.2d at 878; Pet. Reply 3.6” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Id. at 65. These largely conclusory arguments, however, fail to explain how refreshing an event view or event summary page, whether at a regular interval or otherwise, teaches generating different types of log entries at the same time for different portions of packets in the manner claimed. The cited testimony of Dr. Staniford does not provide any further illumination, instead repeating essentially the same conclusory statements made in the Petition. See Ex. 1003 ¶¶ 162, 173; 37 C.F.R. § 42.65(a). Petitioner’s Reply also fails to supply the necessary explanation or supporting evidence. Petitioner notes that “flow-log entries are generated from the packet-logs”—thus, flow-log entries must be generated after the corresponding packet-log entries and would reflect any changes made to those entries. Pet. Reply 19–21. Although true, these facts pertain only to a single portion of packets, i.e., that their packet-log entries are generated first, and that the related flow-log entries are generated afterward. The same is true even considering that this process can occur at a predetermined “refresh interval.” Petitioner does not identify any specific teaching or suggestion in Sourcefire that indicates how the generation of log entries for two different portions of packets would operate. Instead, Petitioner relies on a bare assertion—without any specific basis in Sourcefire—that “the processing of the packet-logs and the flow-logs are continually being updated or refreshed.” Without sufficient supporting evidence, that bare assertion and the conclusory testimony of Dr. Staniford are inadequate to meet Petitioner’s burden to prove the unpatentability of these claims by a preponderance of the evidence.” slip op. at 35
Patent outcomesUS 9,413,722 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,413,722 - Cisco Systems, Inc. v. Centripetal Networks, Inc.All claims unpatentablePTAB · Feb 11, 2020 · IPR2018-01444 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 5–11, 17–19, 21–27, 33–35, and 37–43 are unpatentable as obvious under § 103 over the listed combinations of Jungck and additional references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“mean “any rule, message, instruction, file, data structure, or the like that specifies criteria corresponding to one or more packets and identifies a packet transformation function to be performed on packets corresponding to the specified criteria.” Dec. to Inst. 7–9. Petitioner agrees with our constructions. Pet. Reply 1–3. The Patent Owner Response proposes “dynamic security policy” be construed to mean “a non-static set of one or more rules.” PO Resp. 7. Patent Owner contends our construction alters the explicit language of the specification describing a dynamic security policy as one that includes any rule, message, etc. Id. at 8 (citing Ex. 1001, 4:43–49). According to Patent Owner, a rule itself is not a dynamic security policy, but only part of a dynamic security policy. Id.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“11. Conclusion as to Claim 1 In consideration of the above, we are persuaded Petitioner has demonstrated sufficiently that the person of ordinary skill would have had reason to combine the teachings of Jungck and Bhatia as asserted in the Petition. We find that Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. 103(a) as obvious over the combined teachings of Jungck and Bhatia. C. Claims 17 and 33 Petitioner treats together the elements of independent method claim 1 and the corresponding elements of independent claim 17, drawn to a system, and independent claim 33, drawn to non-transitory computer readable media having stored instructions. Pet. 37. Patent Owner treats claims 17 and 33 the same way. PO Resp. 12–39. For the same reasons as those applicable to claim 1, we find that Petitioner has shown by a preponderance of the evidence that independent claims 17 and 33 are unpatentable under 35 U.S.C. 103(a) as obvious over Jungck in view of Bhatia..” slip op. at 42
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“downstream clients flow into an edge device within an ISP, packet filters analyze the packets, and the packets may flow out of the edge device to an isolated network containing subscribing servers or their intended destinations (unless they are eradicated or prevented from reaching network 100). Pet. Reply 15–16; Ex. 1010 ¶ 111. We agree with Petitioner that, in view of the similarity in the functions performed by Emb#3 and Emb#4, the difference in the corresponding topologies relative to network 100 shown in Jungck’s Figure 6 and Figure 7 does not negate the reason to combine the respective teachings to a person of ordinary skill. Id. Jungck states edge server 602 of Emb#3 operates similarly to edge servers 402 and 502 of the first and second embodiments. Ex. 1010 ¶ 108. In its discussion of Emb#4, Jungck states As can be seen from the above embodiments, edge devices generally perform the basic functions of intercepting packets from the general flow of network traffic, processing the intercepted packets and potentially releasing the original packets and/or reinserting new or modified packets back into the general flow of network traffic. In general, it is the choice of which packets to intercept and the subsequent processing performed by each edge/packet intercepting device on the intercepted packets, e.g. the application, which distinguishes each device. Id. ¶ 125. We are persuaded that a person of ordinary skill would have had reason to combine the teachings of Emb#3 and Emb#4 to achieve the specific purpose stated in Jungck, i.e. to “decouple the interception of packets from the processing of those intercepted packets and provide a generic packet interception and pre-processing engine which can be utilized in parallel by multiple edge devices” and “[to] provide a standardized interface to a network such as the Internet for the connection of edge type or packet intercepting” slip op. at 30
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“In order to accord substantial weight to secondary considerations in an obviousness analysis, the evidence of secondary considerations must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (internal quotations omitted). A nexus is presumed when “the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the product is not coextensive with the claims at issue—e.g., if the patented invention is only a component of the product—the patentee is not entitled to a presumption of nexus. See id. (citing Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). slip op. at 35
Patent outcomesUS 9,137,205 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,137,205
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.