• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01372 · APJ Linda M Gaudette · IPR · Final written decision

  The Board held claims 1–4, 14–20, 27, and 29 not unpatentable because Averbuj did not disclose a control module configured to generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-970. We, therefore, adopt our finding in IPR-970 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST. IPR-970 FWD, 10–11 (noting that our finding was “based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’434 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’434 patent. See Ex. 1008, 6:3–5, 10:67–11:2, 6:14–17. Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “supports a finding that a customary meaning of “generate” to one of ordinary skill in the art is “cause.”1 We, therefore, determine the broadest reasonable 1 Petitioner relies on Webster’s II, for a definition of “cause.” See Reply 4, 6–8 (citing Ex. 1032, 3). Having determined the broadest reasonable interpretation of “generate” does not encompass “cause,” we do not find this evidence relevant to our claim construction analysis. construction of “generate” is “produce” for the reasons stated above and in our Final Written Decision in IPR-970. We adopt and incorporate by reference our analysis and construction of the term “generate” in our Final Written Decision in IPR-970 (IPR-970 FWD, 24–33).” slip op. at 16

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

    “Moreover, the evidence in this proceeding fails to support a finding that Averbuj’s BIST controller 4 is configured to generate address signals for testing the memory devices in the manner claimed. In Averbuj, the algorithms (i.e., CMD_DATA containing OP CODE such as SET ADDRESS (see Ex. 1011, 4:4–12, 5:19–21, Table 1)) communicated to sequencers 8 are either received by user interface 22 via external input (id. at 5:41–43) or generated by another component (i.e., a component that is not part of BIST controller 4 circuitry) and stored in algorithm memory 20 (see Ex. 2012, 30:23–24, 41:1–4, 54:21–22, 55:6–25, 55:20–56:9 (wherein Dr. Bagherzadeh testifies that OP CODE residing in the algorithm memory of BIST controller 4 are generated by hand or by a tool, e.g., a compiler, and that “99 percent of the designs or chips do not have a compiler on-board”)). Multiplexer 24 selects one of the algorithms (i.e., CMD_DATA) and BIST controller 4 provides to sequencers 8 the same CMD_DATA (e.g., address signals) without transformation or modification. See Ex. 1011, 4:4–12, 5:16–21; Ex. 2012, 54:8–13 (“Averbuj Figure 2, without consideration of any other disclosure in Averbuj, illustrates that a multiplexer selects an input from the algorithm memory and the output [] reflect[s] what’s in the input, based on the selection.”). Based on our interpretation of the terms “configured to” and “generate,” as discussed above, the claim recitation “a control module configured to generate address . . . signals for testing the memory devices” (claims 1, 20, and 29) does not read on Averbuj’s BIST controller 4, because the SET ADDRESS signal output by BIST controller 4 is produced by a component external to BIST controller 4, and merely selected by multiplexer 24 and provided to sequencers 8 without transformation or modification by BIST controller 4. In sum, after considering the parties’ arguments and evidence, we determine Petitioner has not shown, by a preponderance of the evidence, that Averbuj discloses “a control module configured to generate address . . . signals for testing the memory devices” as recited in independent claims 1, 20, and 29. Petitioner does not correct this deficiency in its challenges as to dependent claims 2–4, 14–19, and 27. See Pet. 32–39; 35 U.S.C. § 112, ¶ 4 (“A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”). Because Petitioner has not identified in Averbuj a teaching of each and every limitation recited in claims 1–4, 14–20, 27, and 29, Petitioner has not met its burden to show these claims are unpatentable under 35 U.S.C. § 102(b) as anticipated by Averbuj.” slip op. at 30

  Patent outcomesUS 8,001,434 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,001,434
• HTC Corporation / HTC America, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Feb 3, 2016 · IPR2014-01198 · APJ James B Arpin · IPR · Final written decision

  Claims 1–3 and 5 are unpatentable as obvious over Sears and as obvious over Sears and Nguyen.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not.” slip op. at 23

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “To antedate . . . an invention, a party must show either an earlier reduction to practice, or an earlier conception followed by a diligent reduction to practice.” Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (emphasis added, internal citation omitted). Patent Owner’s position is based on the first of these options, i.e., that it was the first actually to reduce the invention to practice, rather than the first to conceive plus diligent reduction to practice. PO Resp. 9; PO Sur-Reply 4–5. A party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party must construct an embodiment or perform a process that satisfies every element of the claim at issue, and (2) the embodiment or process must operate for its intended purpose. See Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000). Moreover, in order to demonstrate an actual reduction to practice, the constructed embodiment must have been tested sufficiently to demonstrate that it will work for its intended purpose, but it need not be in a commercially satisfactory stage of development. See, e.g., Scott, 34 F.3d at 1062; see also Wells v. Fremont, 177 USPQ 22, 24–25 (BPAI 1972) (“[E]ven where tests are conducted under ‘bench’ or laboratory conditions, those conditions must ‘fully duplicate each and every condition of actual use’ or if they do not, then the evidence must establish a relationship between the subject matter, the test condition and the intended functional setting of the invention,” but it is not necessary that all the conditions of actual use are duplicated.). Further, an actual reduction to practice can be done by another on behalf of the inventor. De Solms v. Schoenwald, 15 USPQ2d 1507, 1510 (BPAI 1990). Here, it is undisputed that Concept Electronique, rather than the named inventor, Mr. Charrat, fabricated the prototype, on which Patent Owner relies to establish actual reduction to practice. PO Resp. 17–18. Assuming initially, without deciding, that the prototype embodies the subject matter of the challenged claims, the issue is whether Patent Owner has sufficiently shown that the Concept Electronique-built prototype inures to Patent Owner’s benefit. We determine that Patent Owner has not. slip op. at 23

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “in the art as “a person with at least a master’s degree in electrical engineering (or a substantively equivalent degree), in addition to two years of experience with systems that use short-range wireless communication, such as radio frequency identification (RFID) systems.” Ex. 1003 ¶ 12 (emphasis added); Ex. 1031 ¶ 18; see also Pet. 8 (adopting this definition). Patent Owner’s declarant, Dr. Alyssa B. Apsel, defines a person of ordinary skill in the art as a person having “at least a bachelor’s degree in electrical 7 Patent Owner does not contend in the Patent Owner Response that secondary considerations are present that would render the challenged claims patentable over the applied references. See Paper 11, 2–3. engineering (or an equivalent degree), and two years of experience with short-range wireless communication systems.” Ex. 2027 ¶ 13 (emphasis added); see PO Resp. 9, 45, 47. The proposed definitions differ primarily in level of academic achievement, with Patent Owner’s declarant proposing a lower level. Based on Exhibit 1003 (Attachment A) and Exhibit 2028, both Dr. Tentzeris and Dr. Apsel meet or exceed the requirements for qualification as a person of ordinary skill in the art under either definition. Moreover, neither party challenges the other party’s declarant’s credentials. Therefore, to the extent necessary, we adopt Dr. Apsel’s definition of a person of ordinary skill in the art.” slip op. at 32

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Specifically, Patent Owner contends that “[t]his method of modulating the power does not involve ‘setting’ the buffers to any particular value; it only involves changing the duty cycle of the input they receive.” Id. (citing Ex. 2027 ¶ 58). Nevertheless, because Sears’s Figure 5 depicts a square wave provided by buffers 200A–200F, we are persuaded that Sears teaches a control circuit comprising binary ports or teaching or suggesting binary ports. See Ex. 1003 ¶¶ 30, 31. In addition, Petitioner argues that buffers 200A–200F are “tristatable” because “buffers (200A–200F) are used to yield (1) a high level output, (2) a low level output, or (3) complete disconnection that amounts to a high impedance state.” Pet. 16 (citing Ex. 1004, col. 5, ll. 4–8, col. 6, ll. 39–46; Ex. 1003 ¶¶ 32, 33). Moreover, each buffer 200 may be “constructed from a CMOS hex inverter integrated circuit” that drives a load impedance that is either “a low impedance load, such as the electromagnetic antenna 108B, or a high or infinite impedance load.” Id. at 16 (quoting Ex. 1004, col. 4, ll. 36–42). Petitioner discusses the application of Sears’s disclosure of a CMOS hex inverter circuit and why a person of ordinary skill in the art would understand that this circuit teaches the control circuit recited in the challenged claims. Pet. 15–16; see Ex. 1003 ¶ 33 (“A [person of ordinary skill in the art] would have understood that a tristatable CMOS inverter, as described in Sears, provides output in one of three states: logic 0, logic 1, and high impedance.”). Consequently, we are persuaded that Petitioner has identified sufficiently “the scope and content of the prior art . . . ; differences between the prior art and the claims at issue . . . ; and the level of ordinary skill in the art.” Graham, 383 U.S. at 17.” slip op. at 36

  Patent outcomesUS 6,700,551 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,700,551
• Atoptech, Inc. v. Synopsys, Inc.All claims unpatentable
  PTAB · Jan 19, 2016 · IPR2014-01159 · APJ Peter P Chen · IPR · Final written decision

  Claims 5, 23, 24, and 27 are unpatentable as obvious; claim 31 was not shown anticipated, and claim 26 was not shown obvious.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Decision to Institute, we construed “place and route unit (PRU).” We determined that the broadest reasonable interpretation of that term is, “a section of the IC design created to represent the physical partitioning of the IC design.” Dec. to Inst., 10. Neither party disputes that construction in their post-institution filings.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “in the underlying patent. In re Cuozzo, 793 F.3d at 1280; Microsoft Corporation v. Proxyconn Inc., 789 F.3d at 1298. Here, the specification expressly defines atomic blocks: Defining Atomic ("A") blocks (sometimes called units) – “A” blocks are the netlist blocks that will be physically partitioned to create place and route units (PRUs). "A" blocks may contain only standard cells or they may contain additional levels of hierarchy. For the purpose of partitioning the circuit design into PRUs, the "A" blocks are indivisible. Ex. 1001, 4:8–12. Consistent with the patentee’s express definition of atomic block, we determine the broadest reasonable interpretation of atomic block to be, “a netlist block that is indivisible for the purpose of physically partitioning the circuit design into place and route units (PRUs).”” slip op. at 11

  • Skill levelSkill level board ownDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner has not proposed a level of ordinary skill in the art. Patent Owner proposes that one of ordinary skill in the art would possess a “Bachelor of Science degree in Electrical Engineering, Computer Engineering, or a closely related field,” as well as “a minimum of one to two years of professional experience in the engineering development of integrated circuit technology.” Ex. 2004 (Declaration of Daniel Foty, Ph.D.), ¶ 15. At the oral hearing, Petitioner stated it had no dispute with Patent Owner’s proposal. Tr. 16:21–17:2. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 25

  Patent outcomesUS 6,567,967 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,567,967
• Atoptech, Inc. v. Synopsys, Inc.All claims unpatentable
  PTAB · Jan 19, 2016 · IPR2014-01150 · APJ Peter P Chen · IPR · Final written decision

  Claims 1, 4, 8, 9, 12, 16, 19–22 are unpatentable as obvious over Fields and Su; claims 32–36 are unpatentable as anticipated by Su.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Owner proposes that one of ordinary skill in the art would possess a “Bachelor of Science degree in Electrical Engineering, Computer Engineering, or a closely related field,” as well as “a minimum of one to two years of professional experience in the engineering development of integrated circuit technology.” Ex. 2004 (Declaration of Daniel Foty, Ph.D.), ¶ 15. At the oral hearing, Petitioner stated it had no dispute with Patent Owner’s proposal. Tr. 16:21–17:2. We determine that an express definition of the level of ordinary skill is not required. The level of ordinary skill in the art can be reflected in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”) (internal quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, we find the level of ordinary skill in the art to be reflected in the cited references.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “in the underlying patent. In re Cuozzo, 793 F.3d at 1280; Microsoft Corporation v. Proxyconn Inc., 789 F.3d at 1298. Here, the specification expressly defines atomic blocks: Defining Atomic ("A") blocks (sometimes called units) – “A” blocks are the netlist blocks that will be physically partitioned to create place and route units (PRUs). "A" blocks may contain only standard cells or they may contain additional levels of hierarchy. For the purpose of partitioning the circuit design into PRUs, the "A" blocks are indivisible. Ex. 1001, 4:8–12. Consistent with the patentee’s express definition of atomic block, we determine the broadest reasonable interpretation of atomic block to be, “a netlist block that is indivisible for the purpose of physically partitioning the circuit design into place and route units (PRUs).”” slip op. at 10

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We agree with Petitioner that the ’967 patent, Fields, and Su are all directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “directed at efficient circuit design involving large and complex circuits, and determine that, as set forth in the VLSI textbook, FPGA is indeed a type of layout for physical design. We also credit the testimony of Dr. Ghiasi, who opines that: While Fields presents this logical approach to IC floorplanning in the context of FPGA design, one of ordinary skill as of September 2000 would have understood that the general teachings of Fields could be applied to the design of an ASIC chip as well as an FPGA chip and would have been motivated to apply the teaching of Fields to solve the problem of very large IC chip design. . . . One of ordinary skill in the field of EDA design would be familiar with IC design for both ASIC and FPGA formats and would rely on teachings in the context of FPGA chip design, especially in the front end of an EDA design flow, through floorplanning and partitioning of the physical design in addressing problems in ASIC chip design, and vice versa. Ex. 1009 ¶¶ 72–73. Even assuming arguendo the Board were to accept Patent Owner’s assertion that design of an FPGA is “completely different” from design of an integrated circuit, the Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) stated, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.” Thus, under KSR, such purportedly “different” teachings of Fields about FPGA design could be applicable to the physical design of an integrated circuit as described in the ’967 patent and in Su. We are persuaded by Petitioner’s evidence, including the VLSI textbook and the Ghiasi declaration, and find that one of ordinary skill in the art would have understood the applicability of Fields’ FPGA teachings to physical design of an integrated circuit as recited in claim 1 of the ’967 patent.” slip op. at 19

  Patent outcomesUS 6,567,967 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 6,567,967
• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19

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

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41

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

    “As discussed in Section IV.B.2.e., a petition must 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 law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59

  Patent outcomesUS 8,001,434 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,001,434
• Sensus USA, Inc. v. Certified Measurement, LLCInstitution denied
  PTAB · Dec 11, 2015 · IPR2015-01439 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claim 43 unpatentable over any asserted ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may be instituted only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’453 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’453 patent.” slip op. at 2

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

    “Patent Owner contends that Petitioner’s identification of the real parties-in-interest is incomplete, and that the Petition should be denied as failing to comply with 35 U.S.C. § 312(a)(2). Prelim. Resp. 30–31. Patent Owner asserts that in a related litigation involving the ’453 patent, Petitioner identified an insurance company as covering some of the costs of defending the action against Patent Owner. See Ex. 2001. Patent Owner argues: A hallmark of indemnity or insurance agreements that are available to satisfy part or all of a judgment or to reimburse payments of same is an ability for the insurer or indemnitor to control over [sic] aspects of the litigation, including the defense and maintenance of an inter partes review which seek[s] to invalidate the subject patent. Prelim. Resp. 30. Patent Owner’s argument is generic and fails to identify any specific evidence that any parties other than those identified by Petitioner actually is exercising control over or could exercise control over this proceeding.1 Accordingly, we decline to deny the Petition on this basis. D. The References Petitioner relies on the following references: U.S. Patent No. 4,077,005, issued Feb. 28, 1978 (Ex. 1005, “Bishop”); U.S. Patent No. 5,199,068, issued Mar. 30, 1993 (Ex. 1006, “Cox”); U.S. Patent No. 5,689,442, issued Nov. 18, 1997 (Ex. 1007,” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Petitioner does not propose a construction for “augmented measurement” aside from stating that it “is described in the individual claims of the patent.” Pet. 17. Nevertheless, Petitioner’s argument suggests that generating an “augmented measurement” requires effecting some combination of the elements recited in the claim—the first signal, the second signal, and the third signal. See Pet. 27 (asserting that Cox disclosing “combining” the previously recited elements of the claim in arguing that Cox teaches “generating an augmented measurement”). Thus, both Petitioner and Patent Owner recognize that generating an augmented measurement requires combining specified elements of the claim. We agree. The parties’ recognition that an augmented measurement requires combining specified elements of the claim is consistent with the specification of the ’453 patent. The ’453 patent explains that an “augmented measurement comprising the cleartext time plus the physical measurement” is created by adding a physical measurement of any physical parameter or event to a time. Ex. 1001, 7:66–8:2.” slip op. at 13

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

    “Petitioner’s argument is not persuasive because Petitioner fails to show that Bishop’s position P signal is formed from two separate signals based at least in part on two physical measurements. Petitioner’s cited portions of Bishop fail to disclose how position P is generated aside from stating that “position P of the ship is determined to an accuracy of + 2 nm . . . by the ship’s navigation equipment 48.” Ex. 1005, 2:63–66. Petitioner, however, has not identified where, if at all, Bishop discloses how the navigation equipment generates the position of the ship. Petitioner’s citations to Bishop’s column 3 refer to Bishop’s disclosure of generating a combined message, which Bishop designates as IS + P + T1, and then enciphers. See, e.g., id. at 3:7–23. Additionally, Petitioner’s reliance on paragraph 40 of the Nielson Declaration fares no better. Dr. Nielson’s testimony includes the same statements as the Petition without providing additional explanation or evidentiary support for us to conclude that Bishop expressly or inherently discloses that its position P signal is formed from two separate signals based at least in part on two physical measurements. See 37 C.F.R. § 42.65(a). Accordingly, on this record, we are not persuaded that Petitioner has established a reasonable likelihood of prevailing on the assertion that Bishop discloses each and every element of claim 43 of the ’453 patent.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,289,453
• Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsInstitution denied
  PTAB · Dec 2, 2015 · IPR2015-01231 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “only if “the information presented in the [P]etition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the [P]etition.” See 37 C.F.R. § 42.108(c). For the reasons given below, on this record, we are persuaded that Petitioner has not established a reasonable likelihood of prevailing with respect to at least one challenged claim of the ’884 patent. Accordingly, we deny the Petition and decline to institute an inter partes review of the ’884 patent.” slip op. at 2

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

    “the setting step of claim 1. Petitioner, however, has not persuaded us, on this record, that Hashimoto likely discloses the claimed adjusting step. First, the citations and parentheticals in Petitioner’s claim charts do not, on their face, teach or suggest this step. Second, even though Petitioner points to Hashimoto’s disclosure of combining photoelectric charge accumulation time changes with gain control, Petitioner does not explain how Hashimoto actually combines these two features. Hashimoto’s discussion of gain control, in the context of Figure 10, suggests that gain is controlled via offsets, specifically offset A or offset B. See, e.g., Ex. 1004, 11:15–20 6 In addition, Petitioner cites to paragraph 74 of the Neikirk Declaration (Pet. 31), which cites to the same portion of Hashimoto but does not provide additional explanation as to how this disclosure teachings the “adjusting” step of claim 1. Ex. 1003 ¶ 74 (citing Ex. 1004, 4:64–5:8; Ex. 1003, footnotes 1–5, 7). (“Accordingly, when the shutter speed is changed from 1/100, the gain is corrected or controlled with the offset, thus obtaining proper brightness control. The offset A is used when the shutter speed is changed from 1/100 to 1/50, and the offset B is used when the shutter speed is changed from 1/100 to a higher speed.”). In Hashimoto’s discussion of gain control, however, Petitioner does not identify, and we are unable to discern, a teaching of “adjusting the overall system gain by adjusting the integration time while maintaining the integration time at an integral multiple of the period of the periodic intensity.”7” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “depend from claim 14. Petitioner relies upon the same teachings of Hashimoto, discussed above with respect to claims 1 and 14, in Petitioner’s challenges to (1) claims 1–6 and 14 as obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 as obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 as obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 as obvious over Hashimoto and the knowledge of a person of ordinary skill in the art. See, e.g., Pet. 31 (referring to Petitioner’s discussion of claim 1), 38 (referring to Petitioner’s discussion of claim 14). Petitioner does not assert that Kinugawa, Nishiyama, or the knowledge of one of ordinary skill in the art9 remedies the deficiencies discussed above with respect to claims 1 and 14, or that the “adjusting” step of claim 1 and the “gain control block” of claim 14 would have been obvious in light of any of these additional references or teachings. Accordingly, for the reasons discussed above with respect to Hashimoto and claims 1 and 14, Petitioner has not established, on the record before us, a reasonable likelihood of prevailing on the assertions that as of 9 For the purposes of this Decision, we need not decide whether Petitioner’s reliance upon the knowledge of a person of ordinary skill in the art violates 35 U.S.C. § 311(b), which limits the grounds under which a petitioner may request cancellation of claims in an inter partes review to “a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications” (emphasis added). the effective filing date of the claimed invention: (1) claims 1–6 and 14 would have been obvious over Hashimoto and Kinugawa; (2) claims 14 and 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art; (3) claims 17–19 would have been obvious over Hashimoto, Nishiyama, and the knowledge of a person of ordinary skill in the art; (4) claims 17–19 would have been obvious over Hashimoto, Nishiyama, Kinugawa, and the knowledge of a person of ordinary skill in the art; and (5) claims 17–19 would have been obvious over Hashimoto and the knowledge of a person of ordinary skill in the art.” slip op. at 17

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,271,884
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 22, 2015 · IPR2015-01050 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the means-plus-function claims lacked sufficient structural disclosure and Feldmeier did not establish claim 63’s forwarding-permission limitation.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute 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 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims of the ’853 patent.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner

    “The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” (Ex. 1001, 5:21–25), or some other processor running IOS (Ex. 1001, 1:33–37). It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” (id. at 3:36–39). Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): “means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel”; “means for making a routing decision in response to said access result”; and “means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet.” Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11

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

    “Patent Owner argues, “Feldmeier’s packet forwarding is not the same as determining forwarding permissions (e.g., whether a packet is restricted from being transmitted from a selected source device to a selected destination device.)” Prelim. Resp. 31–32. Patent Owner further argues Feldmeier does not process a packet based on a forwarding permission. Id. We agree. Petitioner purports to show that “matching one or more characteristics of said packet with one or more access control specifiers,” recited in claim 63, results in “permission” to forward a packet. Petitioner states that “the information obtained from the CAM lookup governs the decision of whether to route or discard the packet.” Pet. 40 citing (Ex. 1003 ¶ 106). We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner (Pet. 40), “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Ex. 1005, 13:24– 27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translations according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input or output permission by, among other things, “determining all of the successful matches”). Based on the above passages, Petitioner has not shown evidence that an affirmative match in Feldmeier results in a permission of packet forwarding, as required by claim 63. For the reasons stated above, we determine Petitioner has not shown sufficiently that Feldmeier discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Feldmeier.” slip op. at 14

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 7,023,853
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 22, 2015 · IPR2015-01049 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

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

    “(“Prelim. Resp.”). Institution of an inter partes review is authorized by statute 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 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1, 2, 5, 7– 10, 12–16, 18–22, 25, and 28–31 of the ’577 patent and, therefore, deny the Petition for inter partes review..” slip op. at 2

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

    “We note that Feldmeier discloses that “[a]ddress filtering is a process similar to address translation, except that rather than retrieving the data associated with an address, the process simply determines whether the address exists in a table of addresses.” Ex. 1005, 1:19–22. Feldmeier further discloses that “[t]he term address translation, as used herein, includes both address translation and address filtering operations.” Id. at 1:22–24. Also, as cited by Petitioner, “Demultiplexer 1430 routes the packet . . . to either output packet queue 1450 or to discard line 1460 depending on the signal received from network address lookup 1440.” Id. at 13:24–27. Finally, “[n]etwork address lookup 1440 is an apparatus for performing hierarchical address translation[s] according to an embodiment of the invention.” Id. at 13:19–22. These passages suggest that a translation that yields no match (filtering) results in the packet being sent to the discard line. In contrast, the Specification supports that a successful match leading to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

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

    “to a forwarding permission is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 24 (“Feldmeier never discloses that its firewall device makes a decision to permit or deny a packet based on a matching entry in the network address lookup.”). Based on the above passages, Petitioner has not shown that, even under our broad construction of access control, an affirmative match in Feldmeier can result in a modification or a denial of packet forwarding, as required by claim 1.” slip op. at 11

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

    “In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices. Ex. 1001, 1:4–10. Patent Owner also cites certain dictionary definitions. Id. at 10–11. Patent Owner states that “modifying” transmission is “nowhere in the record.” Id. Nonetheless, Patent Owner does not explain why the embodiment cited by the Petitioner above is not relevant to construing the claims. Because the embodiment cited by Petitioner suggests that access control may be used to change the destination address of a packet, we apply a broader definition than proposed by Patent Owner. We find the broadest reasonable construction of “access control” to include restrictions or modifications on the intended destination address to which a packet is to be transmitted.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

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

    “For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6

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

    “As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7

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

    “‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577

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.