• Mercedes-Benz USA, LLC v. Daedalus Prime LLCNo claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-01343 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–7, 13–15, 17, and 18 were not shown unpatentable because Bose and White, alone or in the asserted combinations, failed to teach claimed workload comparisons or workload monitoring.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We are persuaded and find for the reasons given that Petitioner fails to prove by a preponderance of the evidence that White teaches or suggests “receiving a bus workload for a communication bus and a first processing element workload for a first processing element based on an integrated circuit reaching a limit.” Patent Owner’s expert Dr. Brogioli testifies that “[t]he workload is a function of the demands imposed by, e.g., applications running on the system, and may or may not be subject to direct control, whereas the conditions under which that workload is processed are controlled directly.” Brogioli Decl. ¶ 66. We agree with Dr. Brogioli and find that White’s frequency and voltage monitoring and adjustments do not result in the power management logic receiving the bus workload as recited in claim element 4[a]. Id. ¶¶ 64–66. We find the testimony of Mr. Wyatt on this issue unconvincing. Wyatt Decl. ¶ 103. In support of his opinion that “monitoring the operating voltages and frequencies of the logic core 120A and common logic bridge 110 is monitoring the workload of those components,” he states: “It was well understood that operating frequency and voltage of a component reflect the activity and use, or workload, of that component.” Id. However, he does not provide any evidentiary support for this statement. We, therefore, give it little weight. See PTAB Consolidated Trial Practice Guide 40 (Nov. 2019)5 (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”) (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)).” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “response. Paper 9. At the institution stage, therefore, Patent Owner did not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 12–13. In its Response, Patent Owner states that it “uses this definition” in its analysis. PO Resp. 15 (citing Brogioli Decl. ¶ 25). In view of the foregoing, for this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’494 patent and the prior art of record, and is supported by the testimony of Mr. Wyatt. See Wyatt Decl. ¶ 21.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionGranted

    “Post-institution, Patent Owner proposes a construction for the term “workload.” PO Resp. 15–16. Patent Owner contends that “[a] person of ordinary skill in the art would understand that in the ’494 patent, the term ‘workload’ means ‘an amount of activity over a quantum or period of time.’” Id. at 15. Dr. Brogioli’s testimony supports this construction, as does Mr. Wyatt’s. Brogioli Decl. ¶¶ 36–38; Wyatt Dep. 34:14–36:9. The ’494 patent also supports this construction. Ex. 1001, 8:20–22, 9:60–63. Petitioner does not dispute this proposed construction in its Reply. For the reasons given, we adopt Patent Owner’s construction for “workload.”” slip op. at 15

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

    “Nowhere does Petitioner or its expert point to an explicit disclosure in Bose of making a comparison of the claimed “bus workload and a bus workload threshold.” Instead, Petitioner relies on its expert’s opinion as to what a person of ordinary skill might have known, without any additional supporting evidence. See, e.g., Pet. 26 (“[A person of ordinary skill] would have understood global PMCU compares a workload threshold as exemplified by the predicted power and performance of each power mode and the monitored workload to select and adjust the power mode of a component” (citing Wyatt Decl. ¶¶ 54–55)). This opinion is not supported by the record. The only disclosure of a comparison in Bose that we have been shown is the comparison of PowerTotal to PowerMax in step 303 of Figure 3, which Petitioner does not rely on to meet the “comparison” limitation in the claim. Hearing Tr. 17:16–20. Also without proper support is Petitioner’s assertion that “a [person of ordinary skill] would have understood that in Bose, selecting or adjusting power mode for a component entails comparing a workload threshold, such as predicted power and performance associated with each power mode with real time statistics, such as the monitored workload of a component.” Pet. 26 (citing Wyatt Decl. ¶¶ 55–56). We determine that for the reasons given, Petitioner fails to demonstrate by a preponderance of the evidence that the claimed comparison element 1[g] of claim 1 is taught or suggested by Bose. We find, therefore, that Petitioner has not demonstrated that claim 1 is anticipated by Bose, nor has Petitioner demonstrated that to a person of ordinary skill, claim 1 would have been obvious in light of Bose.” slip op. at 25

  Patent outcomesUS 8,898,494 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,898,494
• Kia Corp. / Toyota Motor Corp. v. Emerging Automotive LLCInstituted
  PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution

  The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.

  RulingsInstitution decision

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

    “to determine whether to institute review. Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22

  • BurdenInstituted

    “teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,365,188
• AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution denied
  PTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.

  RulingsInstitution decision

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

    “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9

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

    “Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. See 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.”) (cleaned up).” slip op. at 9

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

    “(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,736,883
• Toyota Motor Corp. v. Emerging Automotive LLCInstituted
  PTAB · Oct 22, 2024 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Institution

  The Board instituted IPR of claims 10–20 on all petitioned grounds, 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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 10–20 of the ’268 patent as unpatentable under the challenges presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’268 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Nonetheless, Petitioner’s stipulation mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Thus, we determine that the fourth Fintiv factor weighs against discretionary denial of institution.” slip op. at 48

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

    “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also In re Klein, 647 F.3d at 1348.” slip op. at 33

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

    “recognizing the heterogeneity of vehicles, one would have been motivated to determine applicable settings (e.g., command codes) that are compatible with settings that are settable in the selected vehicle but would avoid determining applicable settings that are incompatible with settings that are settable in the selected vehicle, ensuring that Xiao’s server 118 does not attempt to command vehicles to do things they cannot do, potentially resulting in unexpected and/or undesired vehicle configurations or errors. Pet. 49; Ex. 1009 ¶ 191. Petitioner adds that “[a]voiding such undesirable effects would be a predictable result of implementing Hayashi’s known method of determining compatibility.” Id. For the purposes of institution, Petitioner’s arguments and Dr. Almeroth’s testimony are better supported by the Xiao and Hayashi. Nevertheless, the parties are encouraged to further develop the record on this issue after institution. After review of the arguments and evidence currently of record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that Xiao in combination with Hayashi renders independent claim 10 obvious.” slip op. at 40

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,171,268
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

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

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

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

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 15, 2024 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Scoda did not disclose the claimed interception limitation and Hallak did not disclose execution of the removed script after removal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See generally PO Resp. We adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 10

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

    “We find that the parties’ agreed upon construction is supported by the record before us and apply it in our patentability analysis below, requiring the embedded script to be removed before that script is executed. We determine that no other claim terms require express construction.” slip op. at 12

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

    “during trial, we determine that Petitioner has not shown by a preponderance of the evidence that Scoda discloses intercepting a web page sent from a We agree with Patent Owner that portions of Scoda cited in the Petition do not disclose a web page, let alone one sent from a server and addressed to a client browser. See PO Resp. 17; Tr. 73:10–23. Scoda discloses that “[t]he core module 21 is executed by the web content proxy server 12 to determine where to provide the response with the executed JavaScript functionality in the exemplary environment 10, such as to a web browser on one of the client devices 14(1)–14(n).” Ex. 1016 ¶ 55. But this functionality does not refer to a web page from a server. Instead, this discussion is about a HTTP request that comes from a client device and may include one or more hidden JavaScript identifiers. See id. ¶¶ 50–55. The discussion about providing a response to a web browser on a client device refers to a response to the client device’s HTTP request, in the form of an error message, that is sent from the proxy server to client device. Id. ¶ 58. As Patent Owner points out, this is one of the two scenarios presented in Scoda, the other one being that HTTP request is sent to the server. Id.; PO Resp. 36; see also Ex. 2009 ¶ 70. We agree with Patent Owner and Dr. Almeroth that these communications between the client and proxy server or the proxy server and the content server do not disclose the “intercepting” limitation.” slip op. at 19

  • Strike new argumentNew argument disregardedDenied

    “deficient, Petitioner attempts to change the focus of its argument. Pet. Reply 2–3. Petitioner instead relies on Figure 8 and related discussion as “Scoda’s disclosure of proxy server 12 processing a web page that was sent from a web server.” Id. Scoda, and Petitioner’s argument based on this disclosure is, therefore, an untimely new argument presented in the Reply. See 37 C.F.R. § 42.23(b); see also Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)).” slip op. at 20

  Patent outcomesUS 9,516,091 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · Graham
  Patents in suitUS 9,516,091
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–5 were not proven unpatentable: Athas does not show the same packets are received, modified, and forwarded; neither obviousness combination teaches execution in response to the client’s execution of the second script.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). For our Institution Decision, we adopted Petitioner’s formulation. Institution Dec. 11. Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’s explanation,” he bases his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Final Written Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner 6 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. and used previously in our Institution Decision. We find that this formulation is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12.” slip op. at 23

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

    “as “the number of packets” intercepted in limitation 1a (see PO Resp. 6–7). Petitioner responds that resolving this argument is not necessary. Pet. Reply 1. We find that whether claim 1 requires the packets intercepted by the network appliance in limitation 1a to be the same packets involved in limitations 1b–1d, Petitioner has not persuasively shown that any same number of packets in Athas that are received at proxy platform 101 are then modified and forwarded as required by limitations 1b–1d, for the reasons discussed below. We agree with Patent Owner that the number of packets in limitations 1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  • BurdenNot shown unpatentable

    “1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  Patent outcomesUS 8,924,457 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,924,457
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–19 were not proven unpatentable; the Board found the asserted WebShield and Hallak grounds failed on script-removal and execution sequencing, and the Kothari combination lacked motivation.

  RulingsFinal written decision

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

    “Post-institution, Patent Owner proposes two claim constructions. PO Resp. 7–8. Patent Owner proposes that we construe the term “embedded script,” as defined in the ’498 patent, as “a script that is included or incorporated by reference into a markup language description of a web page and executable by a browser rendering that web page.” Id. at 8 (citing Ex. 1001, 3:23–26). According to Patent Owner, a “script” is “a sequence of machine-readable instructions.” Id. (citing Ex. 1001, 3:21–23). Patent Owner proposes that we construe “executing . . . the removed embedded script” as requiring the removal of the script embedded in the web page to take place before the script is executed. Id. This limitation is recited in claim 1 and in each of the other independent claims. Ex. 1001, 11:43–46 (claim 1), 12:17–20 (claim 10); 12:58–63 (claim 19). Petitioner responds that “[t]hese claim terms have already been construed by the district court and those constructions are not disputed in this proceeding.” Pet. Reply 2. We find that these undisputed constructions are supported by the record before us. We, therefore, adopt them for this Decision. We do not find it necessary to expressly construe any other terms for this Decision.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’ explanation,” he bases 7 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

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

    “We agree that Petitioner’s citations to WebShield do not disclose the sequence of operations called for by the claims. WebShield expressly states that “the HTML page, embedded JavaScript files and embedded CSS files will be parsed and executed to create the DOM data structures of the webpage.” Ex. 1008, 5 (emphasis added). As Dr. Almeroth explains, “WebShield does not remove an embedded script and then subsequently execute the removed embedded script. . . . WebShield . . . executes the embedded JavaScript without first removing that JavaScript from the web page, and only subsequently generates ‘the new HTML page [that WebShield] transfers to the client browser T(R).’” Almeroth Decl. ¶ 78 (quoting Ex. 1008, 6) (final alteration in original). We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

  Patent outcomesUS 9,503,498 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,503,498
• Google LLC v. Security First Innovations, LLCInstituted
  PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution

  The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “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 discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2

  • BurdenDecided for petitioner

    “The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,452,854

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.