- Termax Company v. Illinois Tool Works Inc.Institution deniedPTAB · May 12, 2022 · IPR2022-00106 · APJ Rae Lynn P Guest · IPR · Institution
The Board denied institution on the sole design claim because Petitioner did not show a reasonable likelihood of prevailing on anticipation by Scroggie or obviousness over Scroggie, Scroggie and Benedetti, or Benedetti and Scroggie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Scroggie is based entirely on the premise that we cannot consider the appearance of the lower platform. See Pet. 32 (“Factoring out unclaimed features and the functional aspects of the lower platform, a side-by-side comparison of the remaining aspects of the claimed design . . . illustrates the D’826 design is identical in all material respects to Scroggie and is anticipated . . . .”). Indeed, on the record before us, Petitioner does not address the design as a whole, to the extent that it includes the appearance of the lower platform, in order to show that an ordinary observer, giving such attention as a purchaser usually gives, would deem the design depicted in Scroggie to have the same overall visual appearance as that claimed in the ’826 patent. Rather, Petitioner asserts that “there are no differences between Scroggie and the claimed design.” Pet. 41. Indeed, on the record before us, we agree with Patent Owner that the lower platform is significant to the overall appearance of the fastener design, and thus Petitioner’s analysis is not sufficient on this record. Because we disagree with Petitioner’s premise that the lower platform’s appearance is primarily dictated by function, Petitioner has not established a reasonable likelihood of prevailing as to this ground.” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“platform is not visible “at all times during the fastener’s normal use,” but is “hidden from view.” Pet. 24. Again, the use of the fastener is not limited to use with a seal for a vehicle. Petitioner provides no evidence of manufacturing techniques, sales, advertising, or installation, to support the contention that “[f]rom manufacture, sale and installation, the lower platform is enshrouded by the perimeter seal.” Id. at 25 (citing Ex. 1005 ¶ 65). And, although Petitioner relies on Mr. Wheelock’s testimony, that testimony is unsupported on the record before us. See Ex. 1005 ¶ 65 (failing to identify any support for his opinion). Accordingly, we give Mr. Wheelock’s testimony on this point little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Additionally, as noted above, we are not persuaded that a seal is a necessary component for a general fastener, and, thus, we are not persuaded that fasteners are not manufactured or sold without seals attached. Moreover, we agree with Patent Owner that such a position is not supported by case law.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person having at least a Bachelor’s degree in Mechanical Engineering and at least three years of experience in push-in fastener engineering, and specifically sealing fasteners, as used in the assembly of vehicle trims.” Pet. 9–10 (citing Ex. 1005 ¶ 37). Patent Owner argues that the Petitioner’s definition leaves out a key detail “that the person actually has to be a ‘designer’” and “incorrectly alleges that the person at issue need only be someone with ‘experience’ with push-in fastener ‘engineering,’ without any experience whatsoever in designing them.” Prelim. Resp. 11–12. However, Patent Owner also asserts that an ordinary designer is “[a] person having an engineering degree and at least three years of experience in designing fasteners with designs similar to the ‘D826 patent, or comparable qualifications acquired through work experience.” Id. at 12 (bold emphasis added). Because Patent Owner’s definition includes qualifications acquired through “work experience” broadly, we think the parties’ definitions are quite close. In particular, neither definition strictly requires three years of design experience in fasteners; rather, each includes comparable qualifications through other work experiences in fastener technology. Accordingly, the result is not impacted based on whether we rely on Petitioner’s definition or Patent Owner’s definition of the skilled artisan. Further, based on the limited record before us, we note that the level of ordinary skill is reflected in the prior art designs of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for patent owner
“In construing the design claim, if the particular appearance of a design aspect is dictated by its function, the functional element’s appearance cannot significantly contribute to an ornamental design because it would necessarily have the same appearance in any other device where it serves the same function. Sport Dimension, 820 F.3d at 1321 (“[T]he fact finder should not focus on the particular designs of these elements when determining infringement, but rather focus on what these elements contribute to the design’s overall ornamentation.”). Accordingly, if a feature is shown in the prior art as a whole having a variety of appearances and yet serves the same function, the appearance is likely not critical to its function, or that feature would have looked identical in each device’s design. See Best Lock, 94 F.3d at 1566 (“A design is not dictated solely by its function when alternative designs for the article of manufacture are available.”); L.A. Gear, 988 F.2d at 1123 (“When there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose.”). Thus, to determine what visual aspects of a design are primarily functional, any analysis must consider how that feature appears throughout the prior art and whether and what aspects of that feature appear consistently.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousness - PNC Bank N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Mar 7, 2022 · IPR2021-01399 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Oakes I, Oakes II, Medina, and Roach qualify as prior art to claims 1–29.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina. IV. CONCLUSION In view of Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioner would prevail in challenging any one of claims 1–29 of the ’605 Patent as unpatentable.” slip op. at 28
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“important to the invention is that the image capture device and general purpose computer are communicatively coupled, not their locations relative to one another. See, e.g., id. ¶ 33; accord Prelim. Resp. 32–33. In addition, the ’974 Application does not limit its invention to only those remote deposits performed using a general purpose computer that is separate from an image capture device.10 The ’974 Application broadly describes the image capture device, noting it can be “a scanner or digital camera.” Ex. 1042 ¶¶ 21, 33. The ’974 Application also indicates that the general purpose computer and image capture device are “customer-controlled” and “electronics that today’s consumers actually own or can easily acquire.” Id. ¶¶ 21, 29, 33; see also id. ¶ 19. In light of these disclosures, we find that a person of ordinary skill in the art would have understood the ’974 Application to reasonably convey possession of both integrated and non-integrated configurations. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (explaining that claims with the generic step of “adheringly applying” one layer to an adjacent layer satisfied the written description requirement because “one skilled in the art who read [the] specification would understand that it is unimportant how the layers are adhered, so long as they are adhered”).” slip op. at 20
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable
“transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28
- Obviousness (§103) › Analogous artNot reached
“transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,013,605 - PTAB · Mar 2, 2022 · IPR2021-01445 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–12 over all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“SharkNinja holds that the Board need not consider whether an” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(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 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. . . . If, after review of [Becton, Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of parallel or distributed processing systems.” Pet. 11. Petitioner alternatively argues that a person having ordinary skill in the art “would have a master’s degree or similar post-graduate work in computer science, electrical engineering, computer engineering, or a closely related field, and less design and development experience.” Id. (citing. Ex. 1003 ¶¶ 62–67). Patent Owner does not address the level of skill in the art. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed formulation of the level of ordinary skill in the art, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,852,004 - PNC Bank N.A. v. United Services Automobile AssociationInstitution deniedPTAB · Mar 2, 2022 · IPR2021-01381 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because PNC did not show that Oakes, Medina, or Roach qualified as prior art, so it failed to establish a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although USAA takes issue with PNC’s approach to claim construction for purposes of this proceeding, it does not appear that USAA disputes PNC’s position that we should apply the constructions for the claim terms “mobile device,” “portable device,” and “digital camera” that USAA proposed in the district court and, eventually, the district court adopted. Compare Ex. 1028, 15, with Ex. 1054, 20. Because there is no dispute between the parties as to the construction of these three claim terms, we need not construe them for purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art There is sufficient evidence in the current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Noble, PNC argues the following: [a] person of ordinary skill in the relevant field of art . . . at the relevant time (2006–2017) of the ’681 patent would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field, and two years of experience in software development and programming in the area of image capturing/scanning technology involving transferring and processing of image data to and at a server. Less work experience may be compensated by a higher level of education, and vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 37, 38). In response, USAA states that, “[f]or the purposes of [its] Preliminary Response only, USAA applies the level of skill in the art proposed by [PNC].” Prelim. Resp. 21. To the extent necessary, and for purposes of this Decision, we adopt PNC’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Noble and it is consistent with the ’681 patent.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“conclusion PNC asks us to draw from them. In particular, PNC appears to contend that we should find that the ’247 application does not provide sufficient written description support for the device limitations merely because the scope of the independent claims encompass a configuration that is not described expressly in that document. See Pet. 16, 18–19. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“[A]n applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon, 93 F.3d 1582 n.7 (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); In re Smythe, 480 F.2d 1376, 1382 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the [written] description requirement in section 112.”). We acknowledge that there are situations where a claim’s breadth results in a lack of written description support, but PNC fails to show that such a situation is present here. In its argument, PNC primarily relies on Reckitt, but this case is unavailing. See Pet. 13–15, 19, 32 (citing Reckitt Benckiser LLC v. Ansell Healthcare Prods. LLC, IPR2017-00063, Paper 38 (PTAB Jan. 30, 2018)). First, Reckitt is a non-precedential Board decision that is not binding on this panel.5 Second, and perhaps more importantly, the case is readily distinguishable on its facts. See Prelim. Resp. 30–31 (distinguishing Reckitt from the circumstances presented here). In particular, in Reckitt, the Board panel found that claims lacking a pre-vulcanization requirement lacked written description support in the priority document, noting that “[p]re-vulcanization [was] not some ancillary feature but rather the very heart of the invention.” Reckitt, IPR2017-00063, Paper 38 at 12, 14–15 (emphasis added). However, “[PNC] identifies nothing whatsoever in the ’247 application suggesting that it is important— much less the ‘very heart of the invention’—that the described image capture device be in a housing entirely separate from the described general purpose computer.” Prelim. Resp. 31. In fact, the Petition identifies (and we perceive) no reason why the relative location of the general purpose computer (i.e., the portable/mobile device) and the image capture device” slip op. at 21
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have considered Dr. Noble’s supporting testimony, but it suffers from the same deficiencies as PNC’s arguments. See Ex. 1002 ¶¶ 42–58. Moreover, in our view, Dr. Noble does not explain sufficiently his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess) and, accordingly, we assign little weight to his testimony on this particular issue. E.g., id. ¶¶ 46, 54–57; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 25
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,013,681 - ADT LLC v. Vivint, Inc.InstitutedPTAB · Feb 15, 2022 · IPR2021-01374 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted review of claims 1–3 and 6–11 on anticipation by Oh and obviousness over Oh, and claims 4, 5, and 12–17 as obvious over Oh, Forbes, and TS23.141.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and two years of experience in monitoring or telecommunications systems. Pet. 6 (citing Ex. 1017 ¶ 25). Patent Owner did not file a preliminary response and, therefore, does not dispute Petitioner’s proposal at this stage of the proceeding. We determine, on the current record, that the level of ordinary skill proposed by Petitioner is consistent with the ’739 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt that level in deciding whether to institute trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner proposes constructions for “presentity,” “personal presentity,” “watcher,” and “aggregate presence service.” Pet. 7–10. In particular, Petitioner contends, a person of ordinary skill in the art “would have understood ‘presentity’ to mean an entity that has presence information associated with it, such as information regarding whether a visitor is present at a resident’s door,” and “would have understood ‘personal presentity’ to mean a presentity that is associated with the presence of a person (e.g., a human visitor).” Id. at 7–8 (citing Ex. 1017 ¶¶ 59–63). Petitioner also contends a person of ordinary skill in the art “would have understood ‘watcher’ to mean an entity (person or otherwise) that requests and/or receives presence information regarding a presentity.” Id. at 8–9 (citing Ex. 1017 ¶¶ 64–67). Petitioner further contends a person of ordinary skill in the art “would have understood ‘aggregate presence service’ to mean a service that receives, stores and provides presence-related information.” Id. at 9–10 (citing Ex. 1017 ¶¶ 68–71). Patent Owner did not file a preliminary response and, therefore, does not challenge Petitioner’s proposed constructions at this stage of the proceeding. We determine we need not explicitly construe any claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed above (supra Section III.E.1.c, III.E.1.e), we determine that, for the purposes of institution, Oh teaches or suggests “determining a current location of the watcher” and “storing data related to a current location of the watcher,” as recited in claim 1, and the related limitation in claim 8. We question, however, whether the evidence presented as to these limitations supports Petitioner’s assertion of anticipation of claims 1 and 8. See Net MoneyIN, 545 F.3d at 1369–71. For example, Petitioner’s anticipation ground turns on the construction of “current location,” which has not been fully developed on the current record. Petitioner relies on the IP address of Oh’s wireless communication terminal as being indicative of the physical location of the watcher/user. See Pet. 18–20, 25. Alternatively, Petitioner contends that a person of skill in the art would have recognized that Oh’s home gateway could readily have been modified to store GPS location data associated with the wireless terminal. Id. at 19 (citing Ex. 1017 ¶ 106). We are therefore not persuaded, on the current record, that Oh expressly or inherently discloses the claim limitations related to the watcher/user’s current location and location information. Accordingly, at this stage of the proceeding and without prejudging our ultimate determination with respect to this ground at the conclusion of this proceeding, we determine that Petitioner has not shown a reasonable likelihood of prevailing in establishing that Oh anticipates independent claims 1 and 8, and dependent claims 2, 3, 6, 7, and 9–11 of the ’739 patent.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,956,739 - Forescout Technologies, Inc. v. Fortinet, Inc.Institution deniedPTAB · Jan 27, 2022 · IPR2021-01328 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution because Forescout did not show Thomas was prior art, so it did not show a reasonable likelihood that any challenged claim was obvious over Thomas or Thomas and Gill.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2020). Applying that standard, we do not institute an inter partes review, for the reasons explained below.” slip op. at 2
- BurdenDecided for patent owner
“We agree with Fortinet that Forescout has not met its burden to particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“particularly articulate its arguments in the Petition. To be successful in an inter partes review, a petition must “articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)); see also 35 U.S.C. § 322(a)(3); 37 C.F.R. §§ 42.22(a)(2) (2020). In this case, Forescout’s burden includes, among other things, explaining in the Petition why Thomas “was effectively filed before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(2). On its face, Thomas does not qualify as prior art to the ’421 patent because the application was filed on April 1, 2016, after the effective filing date of the ’421 patent. Thus, when Forescout filed its Petition, it was clear that Forescout needed to rely on a prior application in Thomas’s priority chain, such as the Thomas Provisional, to establish that Thomas was prior art to the ’421 patent under § 102(a)(2). Section 102(d)(2) of 35 U.S.C. provides that, “[f]or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application . . . as of the filing date of the earliest such application that describes the subject matter.” 35 U.S.C. § 102(d)(2) (emphases added). Without having the benefit of the provisional’s filing date, Thomas does not qualify as prior art to the ’421 patent. See supra. Thus, the subject matter disclosed in Thomas is only available as prior art to the ’421 patent to the extent it also is described in the earlier-filed Thomas Provisional. Thus, Forescout has an initial burden, not just to compare the challenged claims with the disclosure in Thomas, but to show that the subject matter that Forescout relies on in Thomas is also found in the Thomas Provisional. Because Forescout has not met that burden, we determine that Forescout has not adequately shown that it is reasonably likely to prevail on the issue of whether Thomas is prior art to the challenged claims of the ’421 patent under 35 U.S.C. § 102(a)(2).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claim is unpatentable under § 103 for obviousness “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103 (2018). As discussed above, we determine that Forescout has not adequately shown that Thomas is prior art to the challenged claims. For the same reason, Forescout has also failed to adequately show that in light of Thomas alone or in combination with Gill, the claimed inventions would have been obvious to a person of ordinary skill in the art prior to March 17, 2014, the effective filing date of the ’421 patent. See supra part III.B. Thus, we determine that Forescout has not shown that there is a reasonable likelihood that it would prevail in proving that any of the challenged claims would have been obvious over either Thomas alone or Thomas in view of Gill.” slip op. at 10
§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,503,421 - Intel Corporation v. Parkervision, Inc.No claims unpatentablePTAB · Jan 21, 2022 · IPR2020-01302 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 3, 4, 7, and 9–11 were not determined unpatentable because the asserted Larson and Larson–Butler grounds did not teach sampling.
RulingsFinal written decision- Skill levelSkill level board ownOther
“Neither party contends that the differences in proposals affect the outcome of this proceeding and we do not find that they do. Nonetheless, on the full record before us, we find that our identification of the level of ordinary skill in art from the Institution Decision as well as Patent Owner’s option (b) are supported by the prior art of record, the ’474 patent, and the opinions of Drs. Subramanian and Steer (which, as discussed above, recognize that additional work experience can compensate for the lack of a formal degree). Accordingly, we modify our preliminary finding to include the specifics from option (b) of Patent Owner’s proposal. Thus, we find that one of ordinary skill in the art would have at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of RF circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems. We also find that less work experience may be compensated by a higher level of education, such as a master’s degree.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because the parties agree that the claims remaining in the trial require “sampling” and also agree that the prior art asserted in this case does not teach “sampling” (as discussed further below), we need not construe these terms expressly to resolve the controversy before us. See Vivid Techs., 200 F.3d at 803. sampling Although claim 1 does not recite “sampling” expressly, the post- institution briefs make clear that the parties agree that claim 1 and its dependent claims require sampling. In particular, Patent Owner contends, (1) “the ’474 patent pertains to a technique called sampling, which involves the use of a ‘switch’” (PO Resp. 2); (2) “all of the challenged claims are directed to a sampling system and, in particular, an energy sampling system (also known as an energy transfer system)” (id.); and (3) “[t]he challenged claims only cover energy sampling and the use of switches” (id. at 20). In its Reply, although Petitioner disagrees with Patent Owner’s interpretation of the claims as limited to energy sampling (i.e., energy transfer systems) (Pet. Reply 3–7), Petitioner contends that based on its “subsequent analysis of [Patent Owner’s] foundational ’551 patent—one of the multiple patents which the ’474 patent incorporates by reference—[Petitioner] now agrees with [Patent Owner] that the claims cover only systems that down-convert by sampling.” Pet. Reply 2. Thus, at a minimum, the parties agree that the claims at issue in this proceeding require sampling.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Discussion As discussed above, the parties now agree that (1) the claims at issue in this proceeding require “sampling” and (2) Larson alone or in combination with Butler do not disclose “sampling” and do not otherwise render the claims unpatentable. See Pet. Reply 2 (stating Petitioner agrees that “the claims cover only systems that down-convert by sampling”), 13 (stating that Larson and Butler do not disclose “down-conversion by sampling” and therefore agreeing that “Larson and Butler do not invalidate those claims”); see Ex. 2031, 6:20–22 (Patent Owner explaining, that “as the Board is aware, both parties agree that sampling is in the claims, and the claims are not invalid in view of all the cited prior art” (capitalization altered)). As such, based on Petitioner’s explicit admissions, Petitioner has not established by a preponderance of the evidence that (1) Larson anticipates claims 1, 3, 4, and 9–11 or (2) the combination of Larson and Butler would have rendered the subject matter of claims 1, 3, 4, 7, and 9–11 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 19
Patent outcomesUS 7,539,474 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,539,474 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentablePTAB · Dec 15, 2021 · IPR2020-01123 · APJ Nabeel U Khan · IPR · Final written decision
Claims 9 and 29 are unpatentable as anticipated by Arnold and obvious over Arnold; Petitioner did not show they were obvious over Chang and Stefik.
RulingsFinal written decision- BurdenDecided for patent owner
“do not agree with Petitioner that it would have been obvious to combine Stefik’s tamper resistant barrier with Chang. Petitioner argues that a tamper resistant barrier would enhance security and would further Chang’s goal of allowing only authorized code to be executed on its platform. Pet. 64 (citing Ex. 1005, 8:55–59; Ex. 1006, 27:11–15). We agree with Patent Owner that this reason to combine is too general and conclusory to explain how the specific modification of securing Chang’s public keys behind a tamper resistant barrier would have provided a relevant benefit to the combination beyond Chang’s own secure distribution system that provides security, without placing the public key behind a tamper resistant barrier. We determine that such a generalized and conclusory reason for combining Chang and Stefik is insufficient. Magnum, 829 F.3d at 1380 (“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory on evidence of record, to support the legal conclusion of obviousness.”). Specifically, Chang discloses that platform producers desire to allow only authorized code to be executed on their platform. Ex. 1005, 8:55–59. This is done by identifying the software that will execute on their platform. Id. at 8:60–62. Chang provides a solution to this problem by using software passports that include digital signatures. Id. at 8:65–9:48. Chang’s solution involves using a public key which is not kept behind a tamper resistant barrier. Id. Thus, Petitioner’s proposed motivation to combine to “enhance security” (Pet. 64) and to allow only authorized code to be executed on a platform does not explain why the public key would have to be kept behind a tamper resistant barrier. In response to the argument that its motivation is too conclusory, Petitioner further explains that its proposed motivation to combine (a platform producer’s desire to allow only authorized code on their platforms) would have motivated a POSITA to secure Chang’s public key behind a tamper resistant barrier to prevent a user from replacing the key. Pet. Reply 19 (citing Ex. 1005, 8:55–59). We agree with Patent Owner that this motivation suffers from hindsight bias as it is the same motivation disclosed in the ʼ721 patent itself for securing public keys behind a tamper resistant barrier. Ex. 1001, 14:23–28 (“In addition, maintaining the ‘public’ key within a tamper resistant environment forecloses the significant threat that the owner of protected processing environment 108 may himself attack the environment.”). Petitioner does not provide evidence that the motivation of preventing the user themselves from replacing the public key was a known problem in the industry or that it stems from either Chang or Stefik. Without such evidence, we conclude that Petitioner’s articulated reason for reconstruction. Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir. 2014) (“The pertinence of the reference as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor’s successful achievement.”).” slip op. at 47
- Expert testimonyPetitioner expert creditedOther
“parties, we are persuaded that Arnold discloses limitation (c) of claim 9. Arnold discloses an adapter card with a secured area. Ex. 1004, 5:49–51 (describing that the microprocessor, memory, and cryptographic functions of Arnold’s cryptographic system are “housed within a secured area or module” of an adapter card); Pet. 49–50. Arnold describes the secured area of its adapter card as an area “where data is protected from disclosure” (Ex. 1004, 5:10) and “which is protected from physical and direct electrical access” (Ex. 1004, 10:47–48). Pet. 49–50. These disclosures indicate that the secured area of Arnold’s adapter card is a “tamper resistant barrier” that prevents the data stored within from read access and, therefore, keeps the data “hidden from the user” as recited in limitation (c). We also credit Dr. Chatterjee’s testimony that, based on Arnold’s description of the secured area of the adapter card, the secured area forms a tamper resistant barrier that keeps data stored within, hidden from the user. Ex. 1002 ¶¶ 141–144 (citing Ex. 1004, 3:56–57, 5:9–12, 5:52–53, 6:13–32, 6:28–30, 6:51–52, 6:55–59). Arnold makes clear that the “secured area of the card . . . contains the public key KPU” (Ex. 1004, 6:51–52) and that “said public key (KPU) is stored within said secured area.” Ex. 1004, 12:25; see also id. at 12:42 (“means for providing a public key (KPU) within said secure areas”); Pet. Reply 9. Dr. Chatterjee’s testimony, which we determine to be credible, also supports Petitioner’s contention that Arnold’s public key is within the secured area of Arnold’s adapter card. Ex. 1002 ¶ 143 (“The public key is secured behind a tamper resistant barrier and therefore hidden from the user.”). in the secure area of Arnold’s adapter card and that (2) the secure area protects data from disclosure and prevents physical and direct electrical access.5 Thus, we agree with Petitioner that Arnold’s public key is “secured behind a tamper resistant barrier and therefore hidden from the user” as recited in claim 9.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ proposals do not differ in any meaningful way to the issues in dispute. We adopt Petitioner’s articulation of the level of ordinary skill in the art, except that we delete the qualifier “a minimum” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. This definition of a POSITA is supported by the testimony of Dr. Chatterjee and is commensurate with the level of ordinary skill as reflected in the prior art and the ’721 patent. We note, however, that our analysis would be the same under either party’s definition of a POSITA.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues the term “load module” recited in claim 9 should be construed as “executable code, such as a computer program or an applet, plus any associated data required for code execution.” Pet. 19. To support this proposed construction, Petitioner cites the Specification’s statements that “[l]oad modules may contain algorithms, data, cryptographic keys, shared secrets, and/or other information that permits a load module to interact with other system components,” and “[f]or a load module to operate and interact as intended, it must execute without unauthorized modification.” Id. (emphasis omitted) (quoting Ex. 1001, 3:28–35); see also id. at 19–20 (citing Ex. 1001, 4:36, 4:51–56, 5:34–39). Petitioner also points to the “Field of the Invention” section of the ’721 patent, which provides that “[t]he present invention relates to . . . techniques for certifying load modules such as executable computer programs or fragments [(called ‘applets’)] thereof as being authorized for use by a protected or secure processing environment.” Id. at 20 (alterations in original) (emphasis omitted) (quoting Ex. 1001, 1:17–28) (citing Ex. 1001, 2:33–37; Ex. 1002 ¶¶ 67–69). According to Patent Owner, Petitioner’s proposed construction is inconsistent with the construction adopted in co-pending litigation of the related matters, in which the term was construed to mean “executable code and any associated data.” PO Resp. 22 (citing Ex. 2007, 44). Nevertheless, Patent Owner contends that the term “load module” does not require construction and should be given its plain and ordinary meaning. Id. Patent Owner further asserts that construction of this term is not necessary to resolve the matters presently in dispute and that its arguments would apply equally under the construction of the co-pending litigation or under a plain and ordinary meaning of the term. Id. we agree with Patent Owner that no explicit construction of this phrase is necessary to resolve the disputes between the parties. 2. “associated digital signature” Patent Owner points out that “the District Court [for the Eastern District of Texas] adopted a construction of ‘associated digital signature’ as ‘a digital value, verifiable with a public key, that can be used to determine the source and integrity of the load module/executable.’” PO Resp. 21 (citing Ex. 2001, 1). Nevertheless, Patent Owner contends that the term “associated digital signature” does not require construction and that its arguments would apply equally under the District Court’s construction or a plain and ordinary meaning of the term. Id. at 23. Petitioner does not provide its own construction of the term “associated digital signature.” Based on the arguments presented by the parties, we agree with Patent Owner that no explicit construction of this term is necessary to resolve the disputes between the parties.” slip op. at 14
Patent outcomesUS 6,157,721 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,157,721 - SAP SE v. Teradata US Inc.InstitutedPTAB · Nov 15, 2021 · IPR2021-00861 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Based on the present record, we do not find Patent Owner’s proposed construction supported by the intrinsic evidence. The ordinary meaning of “manage the storage of data in the volatile storage” does not require limiting the number of copies of the data in the volatile storage, and Patent Owner does not argue to the contrary. Turning to the language of the other claims, we note that claim 5, which depends from claim 1, specifically includes additional language stating that the data is stored “only in one of two portions of the volatile storage,” but claim 1 does not include such language. The use of this additional limitation in dependent claim 5 suggests that the inventors did not intend it to be included within claim 1’s broader language reciting “manag[ing] the storage of data in the volatile storage.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315–16 (Fed. Cir. 2005) (en banc) (“the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim”). Turning to the ’923 patent specification, the portions of the specification Patent Owner relies on appear to discuss a preferred embodiment of the invention, rather than limiting the invention itself. The portions of columns 14 and 15 upon which Patent Owner relies discuss Figure 3 which, the specification explains, “depicts a volatile storage 300 that uses a persistent temperature-based storage management technique as well as a conventional storage management technique in accordance with one embodiment.” Ex. 1001, 14:48–51 (emphasis added); see id. at 5:5–8 (also describing Figure 3 as being “in accordance with one embodiment” of the invention). Interpreting claim 1 to require maintaining only a single copy of a data portion in either the first portion or second portion, where that language does not exist in claim 1, would be tantamount to reading a limitation from a preferred embodiment into the claims, which would be improper. See Philips, 415 F.3d at 1323 (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Patent Owner does not identify any portions of the specification suggesting that limiting the number of copies of the data in the volatile storage is a necessary part of the invention, or that the inventors intended to expressly or impliedly define “manage the storage of data in the volatile storage” to include this requirement. Consequently, at this stage of the proceeding, we do not adopt Patent Owner’s proposed construction requiring that “manag[ing] the storage of data in the volatile storage” requires “coordinating placement of data into and out of the volatile storage so as to limit the number of copies of the data in the volatile storage.” The parties may further address the meaning of this claim phrase during the trial, if appropriate.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Other Terms We determine that it is not necessary to provide an express interpretation of any other claim terms at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention would have had “a Bachelor of Science degree in computer science and two years of industry experience or research working 2 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. with database and related storage management technologies,” and that “[a]dditional education, such as an M.S. in computer science, could substitute for the industry experience as it typically involves at least two years of additional study focused exclusively on computer science, as well as a thesis or project spanning several terms to implement a substantial project.” Pet. 12–13 (citing Ex. 1003 ¶ 31). According to Petitioner, the person of ordinary skill would have “understood the advantages of partitioning a volatile memory into multiple different sections (e.g., buffer pools) and applying multiple different storage management (e.g., cache replacement) policies to those different sections, and known how to implement such designs.” Id. at 13 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill at this stage of the proceeding. Prelim. Resp. 14. For purposes of institution, we adopt Petitioner’s assessment of the level of ordinary skill in the art, which is consistent with the ’923 patent and the asserted prior art of record.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding, Petitioner has made a sufficient showing that Lee discloses this claim element. Paragraph 17 of Lee discloses the use of a temperature-based storage management technique and a non-temperature-based storage management technique (the LRU replacement policy), and that both “may be used to manage a cache.” Ex. 1004 ¶ 17. Based on the present record, Petitioner sufficiently shows that Lee’s disclosure of using these techniques “to manage a cache” involves “manag[ing] the storage of data in” the cache, because both techniques operate in order to control what data is stored in the cache. We do not find Patent Owner’s argument persuasive because it is based on Patent Owner’s proposed construction of “manag[ing] the storage of data in the volatile storage” to require “limit[ing] the number of copies of the data in the volatile storage,” which we do not adopt. See § II.A.2, supra. Consequently, we determine that, on the record before us, Petitioner’s cited evidence sufficiently supports its contentions regarding this limitation.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,851,923 - Dolby Laboratories, Inc. v. Intertrust Technologies CorporationAll claims unpatentablePTAB · Oct 13, 2021 · IPR2020-00662 · APJ Christopher L Ogden · IPR · Final written decision
Claim 24 is unpatentable as anticipated by Hornbuckle and obvious over Katznelson and Narasimhalu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art than Dolby, with either one additional year of work experience (three years versus two years) or a higher degree (a master’s degree versus a bachelor’s degree). The parties also describe the relevant work experience slightly differently, with Dolby describing the field as “network and system security,” while Intertrust describes work experience of a more specialized nature: “secure transactions and encryption.” Pet. 14; PO Resp. 13. However, Dr. Jakobsson states that “[t]he opinions set forth in [his declaration] would be the same under either [his] or Dr. Black’s proposal.” Ex. 2024 ¶ 20. We adopt Dolby’s proposed articulation of a slightly lower level of ordinary skill in the art, because it is consistent with the level of technical expertise assumed by the ’304 patent disclosure and the asserted prior art references. Our analysis would be the same under either party’s proposed level of ordinary skill, and Intertrust would not benefit, in our analysis, from its proposed higher level of ordinary skill.” slip op. at 11
- Prior constructionPrior construction adoptedDecided for petitioner
“We agree with the Texas court that the Texas Action defendants’ proposed construction of “control information,” now proposed by Dolby, is untenable for the reasons given by the court. In its Reply, Dolby does not explicitly contest the Texas court’s construction, but notes that after Intertrust filed its Response, the court in the California Action adopted a similar construction: “information and/or programming controlling operations on or use of a digital file or electronic item.” Pet. Reply 1 n.1 (citing Ex. 1053, 8–11). We consider this construction to be the same as the Texas court’s construction, except that in response to further arguments by Dolby and Intertrust, the California court further clarified that the “resources” falling within the scope of this claim term are specifically “a digital file or electronic item.” See Ex. 1053, 8–11. Neither Dolby nor Intertrust contest that the controlled “resources” are specifically a digital file or electronic item. See, e.g., Pet. Reply 1–2; PO Sur-reply 2–6, 15–24.6” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Because the question of whether control information is received “in a different package” is not material to the issues presented in this case, and the parties are otherwise in substantial agreement as to the meaning of this term, we agree with Intertrust that we do not need to construe the term for this decision. See PO Resp. 24 (citing Ex. 2024 ¶ 73; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“Because the parties are in agreement, and agree with the Texas court that the term “first entity’s control information” indicates that the control information “belongs” to the first entity, we do not need to adopt Intertrust’s proposed explicit construction for this decision. See Nidec, 868 F.3d at 1017. Intertrust’s proposed construction says nothing about the parties’ disputed issue, which is when and how the control information belongs to the first entity. On that point, however, we find persuasive Dolby’s argument that nothing in claim 24 or the ’304 patent requires that control information must belong to the first entity after the first entity delivers the control information to other entities in the VDE. See Pet. Reply 8. As Intertrust acknowledges, the ’304 patent teaches “that one or more entities may supply control information to control the use of the same content.” PO Resp. 25. The information “belongs” to them when they supply it, and after that point, the control information still reflects the interests of the entity who submitted the control information. See Ex. 1001, 57:2–4 (“‘Rules and controls’ define the respective rights and obligations of each of the various VDE participants.”). But it is the computing system recited in claim 24, not the first entity, that ultimately applies the submitting (“first”) entity’s control information to govern the digital content’s usage. See Ex. 1001, 328:2–7; see also id. at 57:24–26 (“‘Rules and controls’ may ‘persist’ as they pass through a ‘chain of handling and control,’ and may be ‘inherited’ as they are passed down from one VDE participant to the next.”).” slip op. at 30
Patent outcomesUS 6,640,304 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,640,304
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.