• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.

  RulingsFinal written decision

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

    “construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11

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

    “The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23

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

    “Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29

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

    “Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35

  Patent outcomesUS 10,217,916 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,916
• Karl Storz Endoscopy-America, Inc. v. Novadaq Technologies, Inc.All claims unpatentable
  PTAB · Mar 8, 2017 · IPR2015-01847 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–17 are unpatentable: all are obvious over Yabe; claims 10, 12, and 14 are also anticipated by Krauter.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “1. Level of Ordinary Skill Mr. Gunday testified, In my opinion, a person having ordinary skill in the relevant art at the time of the alleged invention is a person with a Bachelor of Science degree in Physics, Computer Engineering, Computer Science, or other similar degree, and two ([2]) to three (3) years of work experience relating to medical endoscopic imaging. Such a person would have had an understanding of, or experience in, designing, implementing, and using endoscopic imaging systems, including light sources and endoscopic video and image processing. Ex. 1011 ¶ 76. Mr. Jaggi agrees with Mr. Gunday’s opinion in this regard, adding only that degrees in “Electrical engineering or Engineering Physics” would each qualify as Mr. Gunday’s “other similar degree.” Ex. 2001 ¶¶ 53–54. We agree with and adopt the view of the parties regarding the level of ordinary skill in the art.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Initially, we note bodily incorporation of the features of the embodiments is not the test of obviousness; rather, the test lies in what is taught or suggested to the ordinarily skilled artisan by the proposed combination of embodiments of Yabe. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Furthermore, “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Yabe discloses multiple embodiments and expressly discloses interchangeability of rotary (“surface-sequential-type”) filters as disclosed in Yabe’s second embodiment (Figure 2) and mosaic (“built-in”) filters as disclosed in Yabe’s first and third embodiments (Figures 1a and 10). Ex. 1007, 18:17–21. Yabe’s express disclosures outweigh the unsupported assertions of Patent Owner’s expert regarding the complexity of constructing the proposed combination of embodiments. “Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Therefore, we are persuaded, by a preponderance of the evidence, that the ordinarily skilled artisan would have had reason to combine the embodiments of Yabe, as proposed by Petitioner, “because it would serve the same purpose as the existing rotary filter/CCD arrangement and lead to predictable results.” See Pet. 20; see also KSR, 550 U.S. at 417.” slip op. at 28

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

    “We are disinclined to adopt Patent Owner’s proposed construction of this phrase, as recited in claim 1, to require mathematical manipulation. Claim 1 recites “calculates” in a self-defining manner, specifically reciting calculating the image signals “by minimizing the contribution from signals produced by the image sensor in response to red illumination light.” Thus, claim 1 is clear on its face that the calculation to be performed is by minimizing the contribution from red light. Therefore, our analysis shifts to determining the meaning of “minimizing” as recited in claim 1. The ’151 patent discloses a variety of embodiments for “minimizing” the contribution of red light.5 For example, in support of the Patent Owner’s 5 Additionally we observe that “minimizing” appears only once in the ’151 patent—in claim 1 (and, thereby, also in its dependent claims 2–9). construction, the ’151 patent does disclose exemplary embodiments that minimize red light contribution utilizing mathematical manipulations including, for example, CMYG filter computations that are “considered to be well known to those of ordinary skill in the art” (Ex. 1001, 4:66–7:59) and averaging blue and green signals to “compute” a cyan signal (id. at 4:21–24). The ’151 patent, however, also specifically recites, Because the passbands of the red mosaic filters do not significantly overlap with the pass bands of the other filters for a short wavelength imaging mode, the contribution of the image signals due to red illumination light can be reduced or largely eliminated by not assigning the image signals produced by image sensor pixels that are sensitive to red light to their corresponding display pixels. Id. at 4:5–12 (emphasis added). The ’151 patent further states “a short wave-length image (or the color components of such an image) can be computed from a subset of image sensor signals (i.e. excluding the signal data from red light).” Id. at 8:29–32 (emphasis added). Thus, the ’151 patent also encompasses the contribution of red light in the image being” slip op. at 12

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

    “Although the ’151 patent does not address “analog” or “digital” in reference to “memory,” we agree with Patent Owner, based primarily on the cross-examination testimony of Petitioner’s expert, Mr. Gunday, that the ordinarily skilled artisan at the time of the ’151 patent filing would have understood “memory,” in the context of the ’151 patent, to be referring to digital memory rather than analog buffers. The signals stored in Krauter’s analog buffers are transitory, analog signals propagating from circuits that calculate a value, through the analog buffer, to an analog input of a display monitor. We are persuaded that an ordinarily skilled artisan would not have considered such analog buffers to be a memory in the context of the ’151 patent. Thus, we determine “memory,” as recited in claim 1, means any digital memory capable of storing image signals that minimize the contribution of red light.” slip op. at 17

  Patent outcomesUS 7,420,151 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,420,151
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Sep 28, 2016 · IPR2015-00868 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–10, 13–22, and 25–27 are unpatentable as obvious over Beser and RFC 2401.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner’s expert, Dr. Monrose, states that “a person of ordinary skill in the art [at the relevant time] would have had a master’s degree in computer science or computer engineering, as well as two years of experience in computer networking with some accompanying exposure to network security.” Ex. 2018 ¶ 13. Dr. Monrose adds that his “view is consistent with VirnetX’s view that a person of ordinary skill in the art requires a master’s degree in computer science or computer engineering and approximately two years of experience in computer networking and computer security.” Id. We are persuaded that Patent Owner’s description of the background of a person of ordinary skill in the art is not lower than or inconsistent with Petitioner’s description. Instead, Patent Owner’s definition requires a particular educational background, but appears to result in the same level of expertise as Petitioner’s definition. Based on the testimony of the parties’ experts as well as our review of the ’131 patent and the prior art involved in this proceeding, we conclude that a person of ordinary skill in the art would have a master’s degree in computer science or computer engineering and approximately two years of experience in computer networking and computer security—or the equivalent, obtained through practical work experience and training.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Under 37 C.F.R. § 42.1(d), we apply the preponderance of the evidence standard in determining whether Petitioner has established unpatentability. In doing so, it is within our discretion to determine the appropriate weight to be accorded the evidence presented, including expert opinion, based on the disclosure of the underlying facts or data upon which that opinion is based. Thus, we decline to make a determination about Dr. Tamassia’s opinion, as a whole. Rather, in our analysis we will consider, as it arises, relevant portions of Dr. Tamassia’s testimony and determine the appropriate weight to accord that particular testimony.” slip op. at 14

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

    “in general to be credible, especially given the independent support of RFC 2026 (Ex. 1036). As part of routine discovery (37 C.F.R. § 42.51(b)(1)(ii)), Patent Owner had the opportunity to cross-examine Dr. Tamassia and did so, taking the Tamassia Deposition and making it of record. See Ex. 2016. Patent Owner does not point us to any discussion of this issue in the Tamassia Deposition. RFC 2401’s contents are consistent with the publication process described by RFC 2026 and Dr. Tamassia, including a date “November 1998” indicated on the top right corner of the first page of the document. Moreover, a request for suggestions and improvements for an Internet standards protocol, having no indication of being a mere draft or internal paper, is the type of document whose very purpose is public disclosure. “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). We find that Petitioner has established, by a preponderance of the evidence, that RFC 2401(dated November 1998) was sufficiently disseminated to persons of ordinary skill interested in computer networking and security to be deemed “publicly accessible” at the relevant time.” slip op. at 17

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededDecided for petitioner

    “beyond conventionally resolving it and returning the address.” PO Resp. 5 (citing Prelim. Resp. 25–288). Patent Owner’s arguments and the record show that Patent Owner’s proposed construction adds unnecessary functionality to “intercepting a request” and violates the plain language of the claim. According to Patent Owner’s arguments, another recited phrase in the independent claims (claims 1 and 15), captures the functionality, in particular, the “determination” clause of those claims. Id. More specifically, Patent Owner argues in the determination clause of claims 1 and 15 “a determination is made as a result of the request [to look up an IP address] that the second network device is a device that is available for the secure communication service.” Id. We are not persuaded that functionality in another limitation of the independent claims supports Patent Owner’s proposal. Indeed, that the additional functionality Patent Owner proposes is covered elsewhere in the same claim would make Patent Owner’s proposed construction of the intercepting limitation duplicative and/or confusing. The parties agree that the intercepting limitation (at least) involves receiving a request at some intermediate device. PO Resp. 4; Pet. 9–10. Patent Owner’s proposed construction does not create any distinction between receiving and intercepting. According to Petitioner’s proposed construction, an “interception” by (intermediate) proxy DNS includes “receiving a request at a device other than the device specified in the request.” Pet. 10 (citing Ex. 1005 ¶ 98). Petitioner contends that the DNS 8 To the extent it attempts to do so, it is improper for Patent Owner to incorporate the Preliminary Response in its Response by reference. 37 C.F.R. § 42.6(a)(3). To the extent the arguments are repeated in the Response, they are proper and will be considered. proxy 2610 “‘intercepts’ all DNS lookup functions to examine whether access to a secure site has been requested.” Id. (citing Ex. 1003, 40:36–42, Figs. 26, 27). Furthermore, as quoted above, Patent Owner agreed in the ’237 IPR that Petitioner’s construction captured “the disclosed embodiments.” ’237 PO Resp. 26. In essence, Petitioner’s construction captures the notion of interception as disclosed in the ’131 patent, by requiring receiving to “pertain” to another entity. Based on the foregoing discussion, the record shows that the additional functionality urged by Patent Owner should not be imported into the intercepting limitation, and Petitioner’s construction tracks the claim and Specification. Accordingly, as set forth in the ’237 IPR Final Written Decision, the broadest reasonable construction of the intercepting limitation is “receiving a request pertaining to a first entity at another entity.”” slip op. at 9

  Patent outcomesUS 8,516,131 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,516,131
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01376 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25; Pong and Smith render claims 17–24 obvious. Claim 11 is not shown unpatentable.

  RulingsFinal written decision

  • BurdenOther

    “and 37 C.F.R. § 42.73. Having considered the record before us, we determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 8, and 15–25 of the ’121 patent are unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not demonstrated by a preponderance of the evidence that claim 11 is unpatentable.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Communications AB, Sony Mobile Communications (USA) Inc., LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively, “Subsequent Petitioners”; and with Initial Petitioners, “Petitioner”) filed a Petition in IPR2015-01376, requesting inter partes review of claims 1–3, 8, 11, 12,3 and 15–25 of the 2 The Petition also lists Samsung Telecommunications America, LLC (“STA”) as a petitioner. Paper 6 (“Pet.”), 1. After the filing of the Petition, however, STA merged with and into Samsung Electronics America, Inc. Paper 10. Thus, STA no longer exists as a separate corporate entity. Id. 3 Subsequent Petitioners represented that they included claim 12 “merely to conform” to the Petition and motion for rehearing of the Institution Decision, regarding claim 12, that was pending before the Board and that if the motion was denied, they requested joinder on “all claims except claim 12.” IPR2015-01376, Paper 3 (“IPR2015-01376 Pet.”), 1 n.1, 33 n.5. Because we denied the motion, we understood Subsequent Petitioners to no longer maintain their challenge of claim 12 and to the extent they did, we determined they had not shown the IPR2015-01376 Petition warranted institution of review of the claim. IPR2015-01376, Paper 12, at 12–15. IPR2015-01376 Pet. Subsequent Petitioners also filed a motion for joinder with this proceeding, which we granted. IPR2015-01376, Papers 4, 12.” slip op. at 2

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

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

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

    “Decision and maintain in this Decision—in which “states” is not limited to cache coherency states—we determine that Pong’s presence bit vector discloses the recited “probe filtering information” “representative of states associated with selected ones of the cache memories,” where either the write update or the write invalidate protocol is implemented. See Inst. Dec. 7–10; supra § II.B.1.a. First, under this construction, there is no dispute that “states associated with selected ones of the cache memories” includes presence. See Inst. Dec. 9–10; PO Resp. 25 (arguing that Petitioner’s argument that the presence bit vector represents the “state” of presence allegedly is foreclosed only by Patent Owner’s proposed “construction of state as a cache coherence protocol state”); id. at 1–11, 25–27; Reply 15; Ex. 3001, 497–48 (definition of “state”); Ex. 2016 ¶ 87. Nor is there any dispute that the bits in Pong’s presence bit vector represent this state of presence. Pong discloses that when a bit in the presence bit vector is set, the processor that corresponds to the bit “has a copy of the data block,” i.e., a copy of the data block is present. Ex. 1003 ¶ 51. Accordingly, we agree with Petitioner that in both the write update and write invalidate protocols, a set bit represents the state of presence of a cached copy of the data block in a” slip op. at 42

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

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

    “reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2

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

    “Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44

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

    “2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73

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

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11

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

    “The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34

  Patent outcomesUS 7,296,121 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 29, 2016 · IPR2015-00108 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 9–13 and 21–23 are unpatentable as obvious under § 103 over Sanders, Edwards, and Patel; claims 13 and 23 also rely on Chapman.

  RulingsFinal written decision

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

    “printed publications” in accordance with 35 U.S.C. §§ 102 and 311(b). PO Resp. 1‒5. We look to the underlying facts to make a legal determination as to whether a document is a printed publication. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-by-case basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). slip op. at 6

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

    “The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”4 Ex. 2102, 2:7–8. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’361 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 14

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

    “We are not persuaded by Patent Owner’s arguments. The crux of these arguments appears to be that, because a Snapshot copy allegedly is an exact copy of the current state of the volume, SnapMirror does not utilize database blocks from different points in time to create a Snapshot copy. The claim language, however, does not require database blocks for different point-in-time copies to be utilized in this manner. Rather, the claim language merely requires receiving and storing database blocks for different point-in-time copies. We agree with Petitioner that the combined teachings of Sanders and Edwards disclose receiving and storing database blocks for different point-intime copies. Sanders discloses that “[t]he SnapMirror initialize command creates a Snapshot copy of the source volume and transfers data from the source to the destination volume,” such that the transferred data is received and stored at the destination volume. Ex. 1104, 22. We also credit Dr. Zadok’s testimony that a Snapshot copy is a point-in-time copy. Ex. 1117 ¶¶ 44, 123. Thus, each Snapshot copy would result in transferred data (i.e., database block) for different point-in-time copies being received and stored. Lastly, even if Patent Owner is correct that a given Snapshot copy uses only database blocks from the same point in time, we agree with Petitioner that this does not mean that database blocks for different point-in-time copies are not received and stored. We conclude that a preponderance of the evidence demonstrates that a person of ordinary skill would have found the limitation of loading the first database at multiple points in time, including receiving and storing database blocks for different point-in-time copies, obvious.” slip op. at 47

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “1132, 1133, 1135, 1136, 1138, 1141–1145, 1147, 1148, 1150, 1154, 1155, 1157, 1159, 1160, 1164, 1166, and 1167. Paper 36 (“Mot. to Exclude”), 1. In inter partes reviews, documents are admitted into evidence subject to an opposing party asserting objections to the evidence and moving to exclude the evidence. 37 C.F.R. § 42.64. As movant, Patent Owner has the burden of showing that an Exhibit is not admissible. 37 C.F.R. § 42.20(c). Patent Owner contends that Petitioner does not rely on Exhibits 1132, 1133, 1135, 1138, 1144, 1148, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. Mot. To Exclude 1 n.1. Petitioner does not dispute this contention. See Paper 46 (“Opp. Mot. to Exclude”). We, therefore, grant Patent Owner’s motion as it pertains to Exhibits 1132, 1133, 1135, 1138, 1144, 1150, 1154, 1157, 1159, 1164, 1166, and 1167. We note, however, that Petitioner does rely on Exhibit 1148. See Reply 11. For reasons discussed below, we deny Patent Owner’s motion as it pertains to Exhibit 1148. Further, Petitioner has moved, unopposed, to expunge Exhibit 1128 (see Paper 34), which motion we hereby grant. Of the remaining objected-to Exhibits, our Final Written Decision discusses and relies on only Exhibits 1106, 1120, 1147, and 1148. We determine, for reasons set forth above, that Petitioner has demonstrated by a preponderance of the evidence that the challenged claims are unpatentable, without need for Petitioner’s additional arguments or evidence in relation to the remaining additional Exhibits. Accordingly, Patent Owner’s motion to exclude Exhibits 1136, 1141–1143, 1145, 1155, and 1160 is dismissed as moot.” slip op. at 57

  Patent outcomesUS 8,566,361 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,566,361
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 27, 2016 · IPR2015-00136 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4, 5, 27–29, and 34 are unpatentable under § 103 over the NetApp references, with Hart added for claims 4, 5, 29, and 34.

  RulingsFinal written decision

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

    “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18

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

    “PO Resp. 18–19 (quoting Ex. 2002, 2:7–12). The first phrase in the cited passage above explicitly defines the term, by stating “[a] database block is a unit of data used by a database.”12 Ex. 2002, 2:7–9. Although the sentence following shortly thereafter states that a database block “stores metadata,” that sentence by itself is insufficient to limit the disputed term by requiring the unclaimed “metadata” feature because it does not state unambiguously that all “database blocks” must include metadata. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (construing a claim term broadly because “[n]o statement in the written description [ ] constitute[d] a limitation on the scope of the invention”) (quoting Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1301 (Fed. Cir. 2003)). Further, the cited passage also does 12 The first sentence also states a database block comprises “a specific number of bytes stored in the storage.” For the reasons discussed below, we find this addition is not part of the explicit definition but, rather, represents embodiments within the defined term. Patent Owner also fails to explain how to interpret this particular phrase or how it presents a material issue related to the prior art. not exclude the possibility of some database blocks not having any metadata. See id. at 908 (passages in the Summary of the Invention section of a patent did not limit the scope of the invention because the passages, “although focusing on the use of the invention in conjunction with pressure jackets, do not disclaim the use of the invention in the absence of a pressure jacket”). More importantly, the rest of the ’174 patent is consistent with a definition of database blocks that does not require metadata in all database blocks.” slip op. at 21

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

    “We are persuaded that a preponderance of evidence demonstrates that the four NetApp References are sufficiently related for purposes of this obviousness analysis. Patent Owner does not dispute that all four documents refer to NetApp products and technologies that include FlexVol, FlexClone, Snapshots, and the ONTAP operating system. See Ex. 1018 ¶¶ 35–43; PO Resp. 35–39. Even if the documents refer to various versions of those products and technologies, we are persuaded that a person of ordinary skill in the art would have been motivated to look to the teachings of the four references based on express disclosures in the references themselves. For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48

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

    “The Petition further explains that a person of ordinary skill would have found it obvious to modify NetApp’s existing SnapManager GUI (as disclosed in Neto) for Hart’s timeline GUI because they provide similar functionality of managing multiple point-in-time databases and both allow restoring files to their prior stated based on a selected point-in-time. Pet. 34–35 (citing Ex. 1018 ¶ 117–120). We find a preponderance of the evidence supports this assertion. We find persuasive Dr. Zadok’s testimony that the difference between the two references is that “Hart’s GUI used a timeline structure to display stored snapshots, whereas Neto used a list structure to display backups (snapshots), one of which could be selected for restoration by right-clicking it.” Ex. 1018 ¶ 120. And we agree that “[s]ubstituting Hart’s timeline-based GUI for selecting (typically by clicking a mouse) a point-in-time copy for Neto’s right-click based method of selection was nothing more than a simple substitution of one known method of selection with another.” Pet. at 35; see also Ex. 1007 ¶ 25 (“[I]t should be apparent that the disclosed implementations can be incorporated in, or integrated with, any electronic device that has a user interface.”). Moreover, we credit Dr. Zadok’s testimony that “Neto’s examples name the point-in-time copies based on the time they were taken and can list them alphabetically; thus, they were typically arranged in a timeline” and concludes that “[g]iven the similarities . . . it would have been obvious for a POSITA to substitute Neto’s GUI with Hart’s GUI to perform the snapshot backup, restore, and clone functions described in Neto, Edwards, Edwards II, and Klivansky.” Ex. 1018 ¶ 120. We, therefore, find a preponderance of the evidence demonstrates that a person of ordinary skill would have had reason to combine the teachings of the Edwards, Edwards II, Neto, and Klivansky with Hart. In sum, as with the independent claims, we have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 4, 5, 29, and 34 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, Klivansky, and Hart.” slip op. at 69

  Patent outcomesUS 8,468,174 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,468,174
• Actifio, Inc. v. Delphix Corp.All claims unpatentable
  PTAB · Apr 27, 2016 · IPR2015-00128 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 4, 5, 27–29, and 34 are unpatentable as obvious over the NetApp references, with Hart added for claims 4, 5, 29, and 34.

  RulingsFinal written decision

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

    “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc. 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Petitioner asserts that the level of ordinary skill is not disputed in this case and that “[t]here is no difference between customers and potential customers of NetApp and a [person of ordinary skill in the art].” Reply 6–7. Mr. Hernandez testifies that NetApp’s customers and potential customers were entities or individuals who were “interested in data storage technology, data management technology, database storage and management technology, and related technologies.” Ex. 1048 ¶ 3. As discussed above, Mr. Hernandez also testifies NetApp had more than two hundred Systems Engineers and other sales personnel during the period of 2004–2009 who distributed NetApp’s technical documents (including Neto) to “thousands” of customers and potential customers. Id. ¶ 4. Hence, the record supports Petitioner’s contention that Neto was distributed to persons interested and ordinarily skilled in the subject matter of database technology at the time of its publication. See Reply 6–7. In view of the foregoing considerations, we find that Petitioner has established, by a preponderance of the evidence, that Neto (dated April 2009) was sufficiently disseminated to persons of ordinary skill interested in database technology to be deemed “publicly accessible” at least more than one year before November 30, 2010, the earliest possible priority date of the ʼ174 patent. See Ex. 1001, (60). Petitioner has also established, by a preponderance of the evidence, that Klivansky (dated October 2004) was available to the interested public at least more than one year before the critical date. Therefore, on this record, we determine Neto and Klivansky qualify as prior art printed publications under 35 U.S.C. § 102(b). slip op. at 18

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

    “Therefore, in view of the entire disclosure of the ’174 patent and the plain language of the claims, we find that the intrinsic record before us does not justify limiting the term “database block” by reading in the “metadata” limitation not found in the claims. See Liebel-Flarsheim Co., 358 F.3d at 908.” slip op. at 25

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

    “For example, the basics of NetApp storage and cloning are described by Edwards and Edwards II. Pet. 30–31 (citing Ex. 1018 ¶¶ 102–103). Although the patent discussing this cloning technology (Ex. 1005, filed April 30, 2004) was filed prior to the publication of an article (Ex. 1003, dated June 22–27, 2008) on the same topic, we are not persuaded that this time difference would deter a person of ordinary skill from combining the teachings of the two references. This is true even if the Edwards article describes updates to the cloning technology not discussed by Edwards II. And Edwards explicitly discusses the use of writable Snapshot copies in database environments to make “copies of a production database for development or test purposes.” Ex. 1003, 14. A person of ordinary skill in the art looking to implement such a solution would have looked to other NetApp publications such as Neto, which explicitly states that it “is intended for use by ‘Oracle database administrators, storage administrators, and architects implementing a backup, recovery, and cloning solution for Oracle databases running on NetApp storage’” (Pet. 30 (quoting Ex. 1004, 4)) and Klivansky, which describes its contents as being useful as “a way of understanding the full landscape of FlexClone benefits, as a refresher of specific FlexClone operations, or as a guided tutorial that filer administrators can try” (Pet. 31 (quoting Ex. 1006, 25)). Given these explicit statements, we are persuaded that a person of ordinary skill would look to combine the teachings of Klivansky with the teachings of the other references even if Klivansky, published in 2004 (Ex. 1006), discussed an older version of the cloning technology.” slip op. at 48

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

    “g. Conclusion In the Decision to Institute, we determined that Petitioner had shown a reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 25–28. We have reviewed both parties’ arguments and supporting evidence, including the disclosure of all four references and the testimony of both Dr. Zadok and Dr. Shenoy. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, for the reasons discussed above, Petitioner has shown, by a preponderance of the evidence, that each of claims 1, 27, and 28 is unpatentable under 35 U.S.C. § 103 as directed to subject matter obvious over the combination of Edwards, Edwards II, Neto, and Klivansky.” slip op. at 68

  Patent outcomesUS 8,468,174 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,468,174

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.