- PTAB · Oct 19, 2021 · IPR2020-00847 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1, 2, 4–7, 10, and 14 are unpatentable as obvious over Kurganov-262 and Chakrabarti; the Board did not reach the alternative grounds.
RulingsFinal written decision- BurdenDecided for petitioner
“Turning now to obviousness, Petitioner identified disclosure within Kurgonov-262 and Chakrabarti which teaches or suggests the limitations of claim 1. Pet. 11–21. Furthermore, Petitioner identified multiple reasons that would have prompted the skilled artisan to combine the teachings of Kurganov-262 and Chakrabarti to arrive at the subject matter of claim 1. Id. at 21–22. Because Patent Owner focused its arguments solely on the issue of whether Kurganov-262 is prior art, Petitioner’s assertions regarding the substantive teachings of Kurganov-262 and Chakrabarti remain unrebutted on the complete record. PO Resp. 31–34; Sur-reply 1–3. Patent Owner likewise failed to substantively address Petitioner’s proffered reasons why the skilled artisan would have been motivated to combine these teachings. PO Resp. 31–34; Sur-reply 1–3. We have reviewed the disclosures of Kurganov-262 and Chakrabarti relied on by Petitioner, as well as the explanations provided by Mr. Lipoff, and are persuaded that the limitations of claim 1 are disclosed in the prior art. Pet. 11–21; Ex. 1002 ¶¶ 103–109; Ex. 1004; Ex. 1008. Petitioner also persuades us that the skilled artisan would have been motivated to apply Chakrabarti’s techniques for web crawling to Kurganov-262’s system, and would have had a reasonable expectation of successfully doing so, thus arriving at the subject matter of claim 1 of the ʼ084 patent. Pet. 21–23; Ex. 1002 ¶¶ 110–114. Therefore, Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 1 of the ʼ084 patent would have been obvious over the combined disclosures of Kurganov-262 and Chakrabarti.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person having ordinary skill in the art as having “a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing. More education could substitute for less experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 41–47). Patent Owner does not contest Petitioner’s definition of the skilled artisan. See generally, PO Resp. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. Moreover, the level of ordinary skill in the art is also reflected by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 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.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Thus, on the complete record, we accept Petitioner’s assessment of the level of one of ordinary skill in the art. C. Asserted Obviousness based on Kurganov-262 and Chakrabarti” slip op. at 11
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Rather, on the complete record, Patent Owner makes inadequately supported assertions regarding what the skilled artisan “would understand” based on the ʼ084 patent’s disclosure. See PO Resp. 33–34. For example, Patent Owner asserts that “[a] POSITA would understand that” polling or pinging “describes a process where by existing and new devices and/or websites are discovered,” and that “‘polling’ includes asking for information from a website, including a listing of URLs or asking a website of a search engine to provide new website information.” Id. at 34 (citing Ex. 2059 ¶¶ 154–155). We reject this line of argument because we afford minimal weight to Patent Owner’s reliance on paragraphs 153–155 of Exhibit 2059. PO Resp. 33–34. These declaration paragraphs provide little detail beyond what is argued in the Patent Owner Response. See 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“We are persuaded by Petitioner’s arguments that sufficient written description support does not exist in the ʼ996 application for “limitation 1.i” which requires the computing device to be “configured to periodically search via the one or more networks to identify new web sites and to add the new web sites to the plurality of web sites.” Pet. 6–11. Thus, we determine that Kurganov-262 is available as prior art against the challenged claims. On the complete record, Patent Owner fails to direct us to specific disclosure within the ʼ996 application that evinces written description for limitation 1.i. Rather, Patent Owner’s citations to the ʼ084 patent fail to describe with adequate precision a computing device configured to periodically search the network(s) to identify new web sites and add such new web sites to the plurality of web sites that are accessed. See PO Resp. 31–34.” slip op. at 20
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,451,084 - PTAB · Jan 10, 2018 · IPR2016-01404 · APJ Kamran Jivani · IPR · Final written decision
The Board found claims 1, 2, 13, 14, 33, 34, 39, 46, and 48 not shown unpatentable: Bensimon did not disclose the claimed restricted-access mode, and Takahashi did not cure that deficiency.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner states––and Patent Owner does not dispute––that “a person having ordinary skill in the art of secure computer data storage devices (i.e. in the art for the ’459 patent) would have had (i) a B.S. degree in electrical engineering, computer engineering, computer science, or equivalent training, and (ii) approximately two years of experience in the design or research of secure computer data storage devices.” Pet. 4 (citing Ex. 1002 ¶ 32). We agree with Petitioner’s statement of the level skill of an ordinary artisan at the time and adopt it as our own. Although Patent Owner does not directly address an ordinary artisan’s level of skill, Petitioner’s description of the level of skill accords with that of Patent Owner’s witness Dr. Goldschlag. Compare id., with Ex. 2004 ¶ 21 (opining that “one of ordinary skill in the art would have had a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or equivalent training, as well as two to three years of technical experience in the field of computer security and storage devices.”). We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau,” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“within an electronic circuit embedded within the storage device.” Ex. 1001, 9:58–59, 10:34–35. Although these claims are not at issue in this case, they evince the patentee’s desire to employ each of the terms “unique” and “specific” where each is intended. It is well established that ordinarily different claim terms are presumed to have different meanings. Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings. . . .”); CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”). Further, the Specification describes that, depending on the selected security level, a cryptographic key can be generated using in part “device-specific security information derived from the unique format information of the removable storage device.” Ex. 1001, 3:66–4:1. The Specification thus describes the format information of the removable storage device as “unique” but describes the security information of the device merely as “specific,” not “unique.” Finally, the Specification discloses “for exemplary purposes only” an embodiment wherein “a unique, device-specific security information can be generated from the unique characteristics of the underlying storage medium.” Id. at 7:43–47 (emphasis added). The Specification thus describes device-specific security information as unique in a particular, non-limiting example and explicitly indicates that the device-specific security information derived in that example is “unique.” See id. In light of the foregoing description, we disagree with Patent Owner’s arguments that “specific” in the context of the claim term “device-specific security information” means unique. Construing “specific” to mean “unique” as Patent Owner urges would render meaningless the subsequent use of “unique” in claims 9 and 17, without a clear indication in the Specification of such an intent. See In re Paulsen, 30 F.3d at 1480. Instead, we accord the word “specific” its ordinary and customary meaning and construe “device-specific security information” as meaning “information particular to, but not necessarily unique to, a storage device and used to secure access to the storage device.” Although we construe the disputed term “device-specific security information,” our determination that Petitioner has failed to show by a preponderance of the evidence that any of the Instituted Claims are unpatentable is not dependent upon our construction, as detailed below.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner has not identified in Bensimon explicit or inherent disclosure of the claimed restricted-access mode. Claim 1 requires operating in restrictedaccess mode “when the storage device does not have the device-specific security information.” Ex. 1001, 9:24–26. Petitioner identifies Bensimon’s read/write password, either alone or in combination with the password-enabling flag, as meeting the claimed device-specific security information. Reply 13; Pet. 22. Thus, in order to meet the requirements of claim 1, Petitioner is required to show that Bensimon discloses operating in restricted-access mode when the storage device does not have the read/write password, or alternatively does not have the combination of the read/write password and password-enabling flag. See, e.g., In re Bond, 910 F.2d at 832 (Fed. Cir. 1990) (holding that in order to show anticipation, claimed elements must be arranged as required by the claim). Petitioner does not make the required showing. As Petitioner argues: “these claims recite operating in one mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is present, and operating in another mode if ‘the device-specific security information’ (i.e., that instance of device-specific security information) is not present.” Reply 16. Petitioner identifies Bensimon’s read/write password, alone or in combination with the password-enabling flag, as the device-specific security information, yet Petitioner does not identify in Bensimon an explicit disclosure that Bensimon’s storage device operates in the claimed restricted-access mode when the read/write password is absent from the device. See id. at 16–22. Rather, Bensimon describes two different possible modes of operation when the read/write password is absent from the storage device, namely either no protection or write protection. Ex. 1004, 5:33–39, 6:3–4, 6:13–29. Contrary to the claim language, operation in Bensimon’s write protection mode depends upon the presence of the write protection password, not upon the absence of the read/write password and password-enabling flag (i.e. the claimed device-specific security information). Ex. 1004, 6:13–23; see also Reply 16 (citing Ex. 1012 ¶ 18) (asserting the claimed restricted-access mode is met “when Bensimon’s storage device 100 only has the write-protection (read-only) password”). This disclosure is insufficient to establish anticipation because claim 1 requires operating in restricted access mode when the storage device does not have the device-specific storage information, which Petitioner asserts is the read/write password and password-enabling flag. “A claim is anticipated only if each and every element as set forth in the claims is found.” Verdegaal Bros., Inc. v. Union Oil. Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). We similarly are not persuaded that Bensimon inherently anticipates claim 1. “Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). Here, the cited disclosure identifies two possible modes of operation when the read/write password and password-enabling flag are absent from Bensimon’s storage device, neither of which necessarily must occur.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“E. Obviousness of Claims 2 and 34 based on Bensimon in combination with Takahashi Petitioner asserts dependent claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. Pet. 36–40 (analysis of claim 2) and 42–43 (analysis of claim 34). Petitioner’s analysis of these claims does not repair the deficiencies described above with regard to the claimed restrictedaccess mode. See id.; see also Reply 25. Accordingly, for the reasons discussed above in the context of claim 1 and based on the full trial record, we determine that Petitioner has failed to show by a preponderance of the evidence that claims 2 and 34 would have been obvious in light of Bensimon and Takahashi. See supra Section III.D.2.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 6,968,459
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.