- PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- BurdenMixed
“Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Jan 17, 2024 · IPR2023-01026 · APJ Aaron W Moore · IPR · Institution
Instituted IPR on claims 1–36 on all petition grounds; the Board found a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review if “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) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in 2 U.S. Patent App. Pub. No. 2003/0137849 A1 (Exhibit 1005). 3 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 4 U.S. Patent No. 4,970,628 (Exhibit 1007). 5 U.S. Patent No. 6,144,158 (Exhibit 1008). 6 U.S Patent No. 6,049,749 (Exhibit 1009). mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“First, Patent Owner asserts that Alden is “fatally ambiguous” and “fails to provide an enabling disclosure” because it describes the use of two-dimensional sensors and switch arrays (as shown in Figure 3, below left), but the headlamp embodiment on which Petitioner relies (which is depicted in Figure 5, excerpted below right), is illustrated as having just a single line of LEDs. See Prelim. Resp. 19–23. Alden’s Figures 3 and 5 We find this argument unpersuasive because we conclude, on the present record, that one of ordinary skill in the art (see Section II.A), would understand that Figure 5 is a schematic/sectional type of drawing intended to show generally how the system components are connected and how the LEDs would project light through the lens, and that for clarity it omits other LEDs that would be necessary to produce a two-dimensional lighting pattern. We find that the skilled artisan would recognize that a headlamp intended to produce a pattern similar to that reflected in the control circuits of Figure 3 would include additional rows of LEDs passing through the center of the lens at different angles arranged around the center of the lens. Alternatively, we conclude that one of ordinary skill in the art wishing to use a headlamp with just a single line of LEDs would understand that the sensor and/or control circuitry would need to be tailored to such an arrangement.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,894,503 - PTAB · Dec 12, 2023 · IPR2023-01040 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 48–87 based on the petition’s asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“previously challenged the same claims of the same patent. General Plastic, Paper 19, 16. Here, Patent Owner asserts that although Petitioner did not do so, we should consider Petitioner as having a substantial relationship to Volkswagen, which is also as a defendant in Patent Owner’s infringement suit. Prelim. Resp. 50–51. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 51), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id.), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 52), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 8; Prelim. Resp. 6. As discussed below, however, Patent Owner applies and argues for a particular construction of “classifying an object.” See infra at 11 (§ II.D.1.a). We discuss that potential construction below. Beyond that term, we agree with the parties and therefore do not further construe the claims for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“an object is an oncoming vehicle or anything else, i.e., classifying an object.” Prelim. Resp. 17. In Patent Owner’s view, Alden’s CPU instead “simply determines whether detected incoming light has a threshold intensity and controls the beam segments produced by the LED elements 119 of headlight 123 accordingly.” Id. at 17–18. Patent Owner takes the position that “classifying an object requires identifying an object and distinguishing that object among multiple classes or types of objects, such as distinguishing between vehicles, road signs, and pedestrians as described in the ’551 patent. Id. at 18 (citing Ex. 1001, 44:36–45:44, 52:66–53:4). We do not agree that the two specification passages Patent Owner cites compel such a construction. The first passage relates to a preferred embodiment that includes “a machine vision system with pattern recognition capabilities as is known in the art.” Ex. 1001, 44:37–40. The ’551 patent describes that, using known pattern-recognition methods, camera outputs “are analyzed by appropriate computational means employing trained pattern recognition techniques to classify, identify or locate the contents.” Id. at 44:63–45:3. Although the specification states that known technologies can be sued to classify an image’s contents, that does not define or restrict the understanding of what is required to “classify” an object. The second passage states that, “[u]sing color and pattern recognition techniques it is possible to determine what is a sign.” Id. at 52:66–67. To the extent that informs our understanding of “classify,” is supports a simple correlation between an image and an object. It does not include distinguishing the object among multiple classes or types of objects as Patent Owner contends.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Dec 12, 2023 · IPR2023-01039 · APJ Jason W Melvin · IPR · Institution
Instituted review of claims 8, 10–18, and 24–47 based on the petition grounds because Mercedes-Benz showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“1. Lack of particularity First, Patent Owner contends that the Petition lacks particularity under 35 U.S.C. § 312(a)(3) because it improperly combines anticipation and obviousness 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), effective March 16, 2013, amended the applicable statutes. Because the application from which the ’551 patent issued was filed before this date, the pre-AIA versions of §§ 102 and 103 apply. 4 US 2003/0137849 A1, filed Jan. 22, 2002 (Ex. 1005). 5 US 6,049,749, issued Apr. 11, 2000 (Ex. 1006). 6 US 2002/0057572 A1, published May 16, 2002 (Ex. 1007). 7 WO 2001/07538 A2, published Sept. 27, 2001 (Ex. 1008). grounds based on Alden alone. Id. at 49–52. We do not agree that the Petition’s approach presents a problem or is hard to understand. As discussed below, we agree with Patent Owner that Petitioner has not adequately supported its obviousness contention based on Alden alone (see infra at 17 (§ II.D.2)), but that does not undermine the anticipation ground or make it difficult to understand. Accordingly, we do not agree with Patent Owner that the Petition warrants discretionary denial for lack of particularity.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Resp. 54–59. In that regard, Patent Owner relies on Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11, 2 (PTAB April 12, 2019) (precedential). We do not agree, because Valve involved parties that were accused of infringement based on the same product. Valve, Paper 11, 9–10. Here, Patent Owner asserts that Petitioner is accused of infringing “based on the same type of headlight technology” (Prelim. Resp. 55), but that is insufficient. Patent Owner asserts that both parties’ accused headlights were “developed jointly with Hella KGaA Hueck & Co.” (id. at 56), but that also is an insufficient connection for us to consider two parties substantially related for purposes of discretionary denial. As Petitioner points out, it and VW are direct competitors, and they are accused of infringing based on two different products, not as a supplier and customer of a single product, as at issue in Valve. Prelim. Reply 1. Additionally, although Patent Owner asserts that Petitioner and VW “have a history of coordinating serial IPR petitions against asserted patents” (Prelim. Resp. 56), the facts of each case are unique and we will not infer a motive from prior proceedings. Having considered Patent Owner’s arguments,8 we conclude that the first General Plastic factor weighs strongly against discretionary denial.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that an ordinarily skilled artisan “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems.” Pet. 9 (citing Ex. 1003 ¶ 33). Patent Owner does not dispute that level of ordinary skill in the art. Prelim. Resp. 6. We adopt the undisputed level of ordinary skill in the art for purposes of this decision.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Aug 7, 2023 · IPR2023-00446 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that Sourcefire and Emerging Threats render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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) (2018). For the reasons given below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’343 Patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’343 Patent on the grounds of unpatentability raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“We agree with Petitioner’s arguments. The fact that the disclosures of cited references are the same or similar is unremarkable in that they are applied against the same claims. Additionally, Patent Owner has not presented evidence that the instant Petitioner applied the prior petition, and its non-institution, as a roadmap to try and correct errors of the prior petition. As such, we agree with Petitioner that factor (1) weighs strongly against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“After reviewing the evidence, we do not agree with Patent Owner’s assessment that Emerging Threats is cumulative to Stolfo, which the Examiner considered during prosecution. Patent Owner previously distinguished its claims from Stolfo by arguing, in part, that “Stolfo describes that network statistics may be used to ‘modify the decoy traffic such that it appears statistically similar to normal traffic,’” and that “Stolfo describes generating decoy traffic and not applying a transformation to existing network traffic.” Ex. 1002, 87 (quoting Ex. 2001 ¶ 124). Patent Owner also argued that “the decoy traffic used in Stolfo does not prevent an exfiltration operation[, but instead,] Stolfo explains that ‘[t]hese traps use decoy information . . . to attract, deceive, and/or confuse attackers (e.g., inside attackers, external attackers, etc.) and/or malware.’” Id. (quoting Ex. 2001 ¶ 124). In contrast, as Petitioner asserts, Emerging Threats discloses its rules to be Snort rules for preventing exfiltration. Pet. 37–43. Petitioner’s explanations of the different rules disclosed in Emerging Threats illustrate their use in preventing exfiltration, and not merely applying processes to decoy traffic. Id. Petitioner also discusses the correspondences between specific rules provided in Emerging Threats and operators disclosed in the ’343 Patent. Id. As such, we are not persuaded by Patent Owner that Emerging Threats is merely cumulative to Stolfo. Therefore, we are not persuaded that Petitioner’s combination of Sourcefire and Emerging Threats is cumulative to the art previously considered by the Examiner in the prosecution of the application that issued as the ’343 Patent, or that the proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. In conjunction with Patent Owner’s contention that Petitioner has not shown that the Office erred, we conclude that, given the circumstances presented here, Patent Owner has not demonstrated that Petitioner’s proposed grounds are based on the same or substantially the same art or arguments previously presented to the Office. As a result, we need not further consider whether Petitioner has shown error on the part of the Office. Accordingly, although we have considered Patent Owner’s request for our exercise of discretion to deny institution under 35 U.S.C. § 325(d), on the record before us, we conclude that denial of institution on that basis is not warranted. We proceed to consider the merits of Petitioner’s proposed grounds of unpatentability below.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Weighing the evidence of the public accessibility of Emerging Threats in the relevant timeframe, we determine that Petitioner has established that Emerging Threats qualifies as a printed publication under § 102(b) for purposes of institution. The presence of the Internet Archive’s Wayback Machine copy suggests that the document was available and was accessible on December 2, 2010, prior to the March 12, 2013 effective filing date of the ’343 Patent. We have concerns that Dr. Staniford is only able to vaguely assert that the rules provided in the text document appear to be true copies of the rules that existed in 2010. See Ex. 1003 ¶ 204. Given the nature of inter partes review, however, we can be concerned only with the publication itself; we cannot rely on or inquire into how some system performed or was used in the relevant timeframe. Nonetheless, we are persuaded by Dr. Staniford’s unrebutted testimony that Snort was begun as an open source project in the late 1990s, that the Bleeding Snort project launched in 2004 as an independent clearing house for Snort rules, and that the project continues as Emerging Threats. See Ex. 1003 ¶¶ 202–203. This testimony is sufficient, for purposes of institution, to show that one of ordinary skill in the art, at and prior to the effective filing date of the ’343 Patent, would have known to look to the Emerging Threats website for Snort rules that could be applied to conventional cyber defense systems. We determine this to be a reasonable showing, at this stage of the proceeding, that Emerging Threats was sufficiently publicly accessible to be a printed publication. With respect to Patent Owner’s arguments regarding searchability of the Emerging Threats website, given its notoriety, we are unpersuaded that persons of ordinary skill in the art proceeding to the website would not have been able to search its contents and find the rules logged thereon that would have been applicable to the users’ network security concerns. Even based on Patent Owner’s presentation of the website (Prelim. Resp. 40 (citing Ex. 1030, 11; Ex. 1054)), we are persuaded that it would only have required the exercise of reasonable diligence to find the rules list, given the knowledge that one of ordinary skill would have had regarding Emerging Threats. Petitioner asserts that specific rules can be located within Emerging Threats by searching for their unique SID (Pet. 38 n.9), but persons proceeding to the website without knowledge of a specific SID would have found this to be of little help. Nonetheless, the number of locations that the rules may be located on the Emerging Threats website is still limited and users would have been able to utilize the “Last Modified” indicator, showing which directories had been modified recently, to narrow down any search, assuming that items that had not been modified for some time would be less worthy of search. As such, we are not persuaded that persons of ordinary skill in the art, proceeding to the Emerging Threats website, would not have been able to have searched its contents and find the rules contained thereon.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,567,343 - PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - PTAB · Feb 24, 2023 · IPR2022-01375 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–4, 6–7, 10–19, 21, and 22 on every asserted ground, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The parties appear to agree that it is the signals from the objects that are “unobstructed.” See Pet. 14–15; Prelim. Resp. 51. There also does not appear to be a substantive difference between the parties’ proposed constructions for “unobstructed”—namely, “without obstructions to signals” versus “unblocked” signals. However, in IPR2022-01376, Patent Owner makes arguments concerning the application of claim 1 of the related ’717 patent, which includes very similar language as claim 1 of the ’182 patent, that indicate a disagreement. IPR2022-01376, Paper 10 at 8–15. More specifically, as we discuss in our Institution Decision in IPR2022-01376, it appears that Patent Owner may be using the term “unblocked” to indicate that there is no material at all between the first and second tags (such as pages or covers of a library book), regardless of whether that material blocks the signals from the tags. IPR2022-01376, Paper 11 at 12–17. As we further discuss in our institution decision in that case, we preliminarily determined that the specification and prosecution history of the ’717 patent does not support Patent Owner’s apparent construction of “unobstructed,” and preliminarily construed “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. IPR2022-01366, Paper 11 at 14–16. We adopt the same preliminary construction of “unobstructed” in this proceeding. The parties may further address this claim construction issue in future briefs during the trial.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). Petitioner asserts that “system” is a recognized nonce word, and argues that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem.’” Pet. 6–7. From this, Petitioner concludes that “sensing subsystem” is governed by § 112 ¶ 6. Id. Patent Owner argues that Petitioner has failed to rebut the presumption and that a person of ordinary skill in the art would recognize “sensing subsystem” as the name of sufficiently definite structure. Prelim. Resp. 38. We agree that Petitioner has not overcome the presumption that § 112 ¶ 6 does not apply. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’”—is conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. Pet. 6–7; cf. Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”). Patent Owner points to dependent claims 4 and 5, which depend from” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner, relying on the testimony of Dr. Sharony, contends that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s degree in electrical engineering, computer 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. science, or a related field and significant experience with detection devices, like RFID and metal detectors.” Pet. 6 (citing Ex. 1002 ¶¶ 16, 22). Patent Owner does not offer a definition of the level of ordinary skill at this stage of the proceeding. See Prelim. Resp. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’182 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,646,182 - PTAB · Feb 24, 2023 · IPR2022-01377 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–8, 10–12, and 14–22 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’293 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’293 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that: A person having ordinary skill in the art (“POSITA”) at the time of the alleged invention would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with detection devices, like RFID and metal detectors. Pet. 4–5 (citing Ex. 1002 ¶ 22). Patent Owner, at this stage, does not explicitly address Petitioner’s proposal or propose a different definition of the person of ordinary skill in the art. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’293 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The arguments made by the applicant during prosecution indicate that the terms “unshielded” and later “unobstructed” were added to distinguish the claimed subject matter over prior art having a shield that “blocks substantially all interrogation signals” from an object such that the “interrogator will not detect the [object].” See id. at 222. This suggests that “unobstructed” means that there is no structure akin to a shield between the objects that blocks signals to the extent that an object cannot be detected. For purposes of this decision, we preliminarily construe “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. This determination is preliminary. The parties are encouraged to further address this claim construction issue in future briefs during the trial, and preferably with a focus on intrinsic evidence.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner argues that Garber does not disclose a user interface in the recited “portable configuration” and, therefore, “does not teach a wholly portable interrogator.” Prelim. Resp. 6–7. Patent Owner argues that “[t]he touchpad in Garber is always located in a separate ‘palm-top’ or hand-held computer that is tethered to the RFID reader,” rather than “in an integrated or attached hand-held arrangement.” Id. at 10. Thus, Patent Owner’s arguments are based, at least in part, on its proposed construction of “portable configuration” as limited to an “integrated” or “attached” configuration. These arguments are unavailing as we, for the reasons discussed above in the claim construction section, do not adopt Patent Owner’s limiting claim construction. Also, we understand Patent Owner to argue that “the user interface [of Garber’s Figure 13] does not include an integrated input device having a tactile sensor.” Id. (citing Ex. 2008 (Kinney Decl.) ¶ 23). On the present record, this argument is unavailing. Even if Patent Owner’s proposed construction of “touchpad” as requiring a tactile sensor is correct (an issue we do not reach at this time), id. at 8–9, neither Patent Owner nor Mr. Kinney explains adequately the basis for the assertion that Garber’s device lacks a tactile sensor. See id. at 10; Ex. 2008 ¶ 23. We determine that Petitioner has demonstrated a reasonable likelihood of showing that Garber discloses “a user interface including a touchpad and a display embodied in a portable configuration with said control and processing subsystem and said antenna.” e. Conclusion as to Independent Claim 1 Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 as anticipated by Garber. 4. Independent Claim 17 and Dependent Claims 2–8, 12, 14–16, and 18–22 Independent claim 17 recites a method of operating a portable interrogator configured the same as or similar to the apparatus of independent claim 1. See Ex. 1001, 30:52–61. The remaining challenged claims are all dependent claims. For these claims, Patent Owner does not present arguments beyond those regarding independent claim 1 and discussed above. Having considered Petitioner’s arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenges to claims 2–8, 12, and 14–22 as being anticipated by Garber. E. The Alleged Obviousness of Claims 10 and 11 over Garber and Anderson” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293
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.