- Copeland Comfort Control LP v. Ollnova Technologies Ltd.All claims unpatentablePTAB · Oct 1, 2024 · IPR2023-00624 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–5, 7–11, 13–16, and 20–21 are unpatentable: claims 1–5, 7–11, and 20–21 over McFarland, and claims 13–16 over McFarland and Kates-089.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Claim 1 recites “a multi-sensor package configured to detect a plurality of variables and generate sensor data for each detected variable.” Ex. 1001, 10:46–48. Both parties agree that a “multi-sensor package” is a single packaged device with multiple sensors, not a group of individual sensors. See PO Resp. 6; Pet. Reply 2. Claim 1 does not recite a multi-sensor package with “multiple operational sensors.” Patent Owner does not explain the difference between operational sensors and sensors “configured” as recited in claim 1 or why claim 1 should be construed as requiring an “operational” limitation that does not appear in the claim. Consequently, a requirement that the sensors comprising the package be “operational” is neither required by claim 1 nor suggested by the language of claim 1.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would have had a minimum of a bachelor’s degree in electrical engineering, or a related field, along with at least two years of professional experience in sensors, controls, and/or wireless communications.” Pet. 10–11 (citing Ex. 1002 ¶¶ 46–49). Petitioner further contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. We apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’282 patent and the prior art.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“McFarland discloses an exemplary sensor 209 that “is configured as any of a temperature sensor, humidity sensor, fire sensor, pressure sensor, smoke sensor, occupancy sensor, air quality sensor, gas sensor, O2, CO2, or CO sensor, accelerometer, velocity sensor, [or] combinations thereof” and “may be . . . micro-mechanical sensors . . . or larger sensors for sensing any condition or parameter.” Ex. 1027 ¶ 43 (emphasis added). Patent Owner submits that paragraph 43 of McFarland describes “a device . . . that sense[s] conditions, parameters and/or events such as an environmental condition in a building.” PO Resp. 28 (emphasis added). Based on the foregoing, we find that McFarland teaches “a multi-sensor package configured to detect a plurality of variables.” Ex. 1002 ¶ 72 (“sensor 209 may be configured to detect multiple different variables including temperature, humidity, and other variables”); Ex. 1027 ¶ 43. McFarland further discloses “sensor 209 generates information or data related to the sensed or monitored condition” and “output as one or more signals that may be read by the processor 214.” Ex. 1027 ¶ 43. McFarland further discloses that “information may be generated in response to a physical stimulus such as light, sound, pressure, heat, magnetism, motion, and/or acceleration” that “may be detected as a result of sensing or monitoring the conditions or parameters.” Id.; see also id. ¶ 44 (“A signal generated by the sensor 209 may be an indicator of the sensed condition.”). McFarland also discloses that “processor 214 implements a control process for the device 207” that “may be implemented based on a signal that is read from and/or provided by the sensor 209, such as a measured value of a parameter, an indicator of a sensed condition and/or status of an event.” Id. ¶ 39. Thus, we find McFarland teaches that sensor 209 “generate[s] sensor data for each detected variable.” Ex. 1002 ¶ 74 (“For each condition that it monitors, the sensor generates and outputs sensor data for each measured variable in the form of ‘a measured variable’ or ‘indicator.’” (citing Ex. 1027 ¶¶ 39, 45, 47)). For the foregoing reasons and after reviewing Petitioner’s evidence in light of Patent Owner’s contentions, we find that McFarland teaches this limitation.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Motivation to Combine/Reasonable Expectation of Success Petitioner contends that McFarland discloses that a wireless automation device wakes up and enters a standby or sleep mode in response to a report instruction. Pet. 46. Petitioner acknowledges that McFarland “does not explicitly state that the ‘report instruction’ includes a ‘wake-up command’ or describe how the device is instructed to return to a ‘sleep’ mode between reporting intervals.” Id. (citing Ex. 1027 ¶¶8, 18, 48, 62). Petitioner next contends that Kates-089 “teaches that such a ‘report instruction’ comprises a ‘wake-up command,’ and that a controller issues a ‘standby mode’ instruction (i.e., a ‘power down command’).” Id. (citing Ex. 1029 ¶¶ 78, 82, 86). According to Petitioner, an ordinarily skilled artisan “would have been motivated to modify McFarland with” the teachings of Kates-089 “to advantageously facilitate reporting data both periodically and in response to commands while conserving power via ‘wake-up’ and ‘standby’ (i.e., power-down) commands.” Id. (citing Ex. 1002 ¶ 147; Ex. 1027 ¶ 62; Ex. 1029 ¶¶ 40, 74–75, 82, 86); id. at 47 (arguing that an ordinarily skilled artisan in light of Kates-089 “would have been motivated to modify McFarland’s ‘report’ instruction to include a wake-up command” (citing Ex. 1002 ¶ 149)) (emphasis omitted). Petitioner further contends that an ordinarily skilled artisan would have been motivated to combine McFarland and Kates-089 “to save power consumed during, e.g., the 99.9% of the polling interval when the device may otherwise be unnecessarily turned on.” Id. at 48 (citing Ex. 1002 ¶ 150). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success “applying Kates-089’s wake-up and power-down command teachings to McFarland’s wireless automation device” because “McFarland already teaches that the wireless automation device wakes up and powers down in response to certain commands[] and such commands were well understood.” Pet. 48 (citing Ex. 1002 ¶ 151; Ex. 1005 ¶ 32; Ex. 1027 ¶¶ 8, 18, 48, 62; Ex. 1032, 12:48–54; Ex. 1033, 12:16– 22) (emphasis omitted). Patent Owner does not address motivation to combine or reasonable expectation of success for claim 13. See PO Resp. 26–35. We have reviewed Petitioner’s evidence and contentions and find that” slip op. at 45
Patent outcomesUS 8,224,282 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,224,282 - Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentablePTAB · Apr 15, 2024 · IPR2022-01525 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–4, 6–14, and 16–20 are anticipated by IPUG; claims 5 and 15 are obvious over IPUG; additional Altman-based grounds also apply.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Claim 1 recites that, based on comparing flow identification data with a list of identification data, a packet associated with a match is decrypted and a “corresponding action” is taken on the decrypted packet associated a result of a match, the claim does not limit the action itself, i.e., any action is a “corresponding action” as long as that action is “associated with the match [of the] data on the list.” Id. at 18:13–16. Both parties agree that the examples of such actions in the Specification are exemplary and not limiting. See, e.g., PO Resp. 11 (“[Patent Owner] did not (and does not) attempt to limit the ‘corresponding action’ to any particular action or actions.”). The ’526 patent explicitly describes “blocking” a communication as an “action.” Id. at 6:61–66. As “allowing” a packet is the opposite of “blocking” a packet, in the context of the ’526 patent, “allowing” a packet also constitutes an “action.” Nevertheless, Patent Owner attempts to exclude allowing a packet from the scope of the claimed corresponding action by arguing that the differentiation between claim elements requires construing “performing a corresponding action” to mean more than simply allowing the packets. PO Resp. 10–11 (citing Prelim. Resp. 2, 23–24); PO Sur-reply 5–7. Patent Owner states that other claim limitations, e.g., “comparing the identified flow data with the list of the identification data” (step 1[e]), are recited separately from “performing a corresponding action on each packet of the encrypted communication flow associated with the match data on the list.” PO Sur-reply 7. Patent Owner argues that, for this reason, a construction of “performing a corresponding action” in step 1[f] that does not require some action, other than re-encrypting and transmitting the packets, renders the limitations superfluous. Id. (arguing that different claim terms are presumed to have different scope, citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000)). result. In the ’526 patent claims, the action taken on a packet in step 1[f], e.g., blocking or allowing and logging a communication as discussed in the patent, or merely allowing a communication (the opposite of blocking a communication), is an action on a decrypted packet that corresponds to a “packet of the encrypted communication flow associated with the match with data of the list” (step 1[e]). As Patent Owner acknowledges, the claims do not limit those actions. Thus, the comparing of step 1[e] and the action of allowing the transmission taken in step 1[f] are of different scope. Similarly (and consistent with Patent Owner’s analysis), the further steps of re-encrypting and transmitting the packet in step 1[g] are taken “after performing the corresponding action,” e.g., after allowing the packet, and are presumed to be of different scope from the allowing action in step 1[f]. Ex. 1001, 18:17. Re-encrypting and transmitting a packet that was previously decrypted as matched against flow identification criteria and determined to meet criteria allowing the packet to be transmitted without some other action, are not superfluous steps. Thus, as used in the claims of the ’526 patent, we determine that a “corresponding action” includes any action, including the action of allowing a further transmission of a packet, without further action.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Patent Owner’s emphasis on indexing is misplaced. In Acceleration Bay, the court affirmed the Board’s findings that the subject reference (Lin) was not meaningfully indexed because the website allowed a user to view a list of technical reports indexed only by author or year and its advanced search form was not reliable. Acceleration Bay, 908 F.3d at 773–74. In Blue Calypso, the court noted that there was no evidence a party could navigate from a university’s website concerning common subject matter to the reference itself, i.e., the personal webpage of Ratsimor. Blue Calypso, 815 F.3d at 1350. The facts of Acceleration Bay and Blue Calypso are distinguished from the present circumstances where Cisco’s networking products were well known to persons of ordinary skill and the reference is a page on Cisco’s own website. Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012). In Voter Verified, the court addressed an article (Benson) posted to an on-line publication (Risks Digest) concerning the claimed subject matter (risks of computer automation), noting that Risks Digest was a prominent forum for discussing such technologies (over 100 articles relating to electronic on-line voting). Voter Verified¸ 698 F.3d at 1380–81. The article’s publication on a site interested persons of ordinary skill would have recognized as important “overcame the absence of evidence that the website at which the article was located was indexed and thereby findable by an internet search engine.” See Blue Calypso, 815 F.3d at 1349 (discussing Voter Verified); Voter Verified¸ 698 F.3d at 1380–81. In Voter Verified the court stated: The Risks Digest website was undisputedly open to any internet user by the critical date. Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence. In short, the Benson article was publicly available by the critical date and therefore qualifies as a prior art “printed publication” under § 102(b). Voter Verified, 698 F.3d at 1381. Dr. Prakash testified that a person of ordinary skill would have looked for product manuals and product descriptions concerning the relevant subject matter from other vendors in addition to Cisco, including BlueCoat, Sophos, Trend Micro, and Palo Alto Networks. Ex. 1002, Prakash Decl. ¶ 129. Guide provides instructions for setting up, administering, and monitoring the IronPort Web Security appliance.” Ex. 1008, 27. Where a document’s “purpose is ‘dialogue with the intended audience,’ that purpose indicates public accessibility.” Valve, 8 F.4th at 1374 (quoting Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)). The IPUG document bears the date of November, 2010, on its title page, as well as a copyright date of 2010. Ex. 1008, 1–2; Ex. 1010, 18–19. Although Patent Owner argues the copyright date on the document is hearsay, we do not rely solely on the reference’s copyright notice. The Wayback Machine indicates IPUG was archived before the July 24, 2017 filing date of the provisional application from which the ’526 patent claims priority. Ex. 1001 (code 60), 1:6–9; Ex. 1010, Frank-White Decl. (Ex. A), 5 (Wayback Archive Page of Dec. 29, 2103 identifying IPUG as available on Cisco’s website as of Dec. 29, 2013), 6, 8 (Wayback Archive Page listing IPUG available on Cisco’s website on March 1, 2017), 11–12 (Wayback Archive Page of March 9, 2010 identifying IPUG product).” slip op. at 20
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“Patent Owner’s argument that the NMC drops the traffic after analysis and never re-encrypts is unavailing, as further evidenced by Dr. Goodrich’s deposition testimony. Altman’s NMC does not function to re-encrypt and transmit traffic, but instead uses unencrypted data from the SIA to determine whether to instruct the SIA, which functions as the Man-In-The-Middle, to block or re-encrypt and transmit packets. See Ex. 1005 ¶¶ 31–33; Ex. 1014, Goodrich Tr. 42:18–22 (agreeing that Altman does not describe the NMC itself as accepting or processing encrypted communications), 38:12–15 (agreeing that the SIA responds to instructions from the NMC). sufficiently that Altman at least suggests re-encrypting the decrypted traffic after performing the corresponding action as recited in claim limitations 1[f] and 1[g]. Dec. to Inst. 49–50. As discussed below, having reviewed the arguments and evidence of record, we are also persuaded that a skilled artisan would reasonably understand or infer limitation 1[g] from Altman’s disclosure. See Dayco Prods., 329 F.3d at 1368 (stating that “the dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim element was disclosed in that single reference”). Patent Owner’s citation to Exhibit 1007 (Netronome) as “showing a similar out-of-band9 analysis” informs our understanding of what a person of ordinary skill would reasonably understand or infer from Altman. PO Resp. 47; Ex. 1005 ¶ 12. Netronome, incorporated into Altman by reference, discloses an embodiment for plaintext inspection of SSL-encrypted flows, using a proxy to examine and inspect the SSL-encrypted content before entering or exiting an enterprise. Ex. 1007, 2; Ex. 1005 ¶ 12. In one Netronome embodiment, each individual session terminates on the SSL inspector, but TCP connections are retained end-to-end. Ex. 1007, 6. Terminating and re-originating SSL allows the appliance to obtain plaintext in the encrypted signal that is sent to an adjacent security appliance in a regenerated TCP stream; the data remains encrypted on both the connection 9 Neither the ’526 patent nor Altman uses the term “out of band.” Ex. 1014, Goodrich Tr. 35:19–25. As to Altman, Dr. Goodrich appears to be referring to copies of data flows decrypted by the SIA and received by the NMC as “out of band” content. Id. at 46:11–16 (noting that the NMC is never disclosed as processing flows where it would be sending packets back to a destination); see also id. at 36:3–22. server. Ex. 1007, 6. Petitioner’s Altman-based challenges do not rely on Netronome,” slip op. at 56
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The Petition asserts that IPUG discloses elements 1[f] and 1[g] because IPUG discloses that when encrypted data in an HTTPS connection are received, the appliance (1) decrypts the received encrypted data, if the URL category (the claimed “identified flow identification data”) matches the data in the Decryption Policies, (2) applies the Access Policies to the decrypted plaintext traffic, (3) if the Access Policies allow the traffic, intended destination. Pet. 23–24 (citing Ex. 1008, 257, 268–69; Ex. 1002 ¶¶ 224–229, 232–233).” slip op. at 29
Patent outcomesUS 10,284,526 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,284,526 - Netgear, Inc. v. WSOU Investments, LLC, D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 12, 2023 · IPR2022-00606 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–4, 6, 10, and 12 are unpatentable as obvious over Gouriellec; the majority did not reach the Everdingen grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“A. “marking incoming control packets . . . according to a receiving rate of control packets” (part of Claim Limitation 1.b) Claim limitation 1.b recites, inter alia, “marking incoming control packets . . . according to a receiving rate of control packets.” Patent Owner contends that this portion of claim limitation 1.b means that incoming 2 We apply the per-AIA provisions of the statute, as the application for the ’630 patent was filed before March 16, 2013. 3 U.S. Patent Publication No. 2002/0031091 to Michiel van Everdingen, “Method and a Device for Controlling Source Specific Data Flow,” filed August 31, 2001 (“Everdingen”) (Ex. 1004). 4 U.S. Patent No. 7,133,360 to Louis Le Gouriellec et al., “Conditional Bandwidth Subscriptions for Multiprotocol Label Switching (MPLS) Label Switched Paths (LSPS),” filed May 7, 2002 (“Gouriellec”) (Ex. 1005). ‘control packets’ (i.e., a particular type of packet), (2) they must all be ‘received at said first plurality of inputs’ and (3) they include only those that are ‘to be processed according to a first routing protocol.’” Sur-reply 1 (citing PO Resp. 5–6; Ex. 1001, 6:31–37, 6:50–55) (brackets omitted); see also PO Resp. 10–11. Petitioner’s expert Dr. Akl generally agrees that in the ’630 patent “[t]he marking is defined in function of the receiving rate of control packets being received at an identical subset of inputs and being to be processed by the common processor according to an identical protocol.” Ex. 1003, Akl Decl. ¶ 73 (citing Ex. 1001, 2:48–51, 2:66–3:3). Given this general agreement between the parties, we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets.” Notwithstanding the parties’ apparent agreement on the issues discussed above, according to Patent Owner, Petitioner advanced a new claim construction position in the Petitioner Reply, namely that this limitation is “satisfied by indiscriminately marking according to a receiving rate of all packets, regardless of whether each one of the ‘incoming packets’ is a ‘control packet’ satisfying all the criteria expressly set forth in the claim language.” Sur-reply 2 (citing Pet. 21; Ex. 1003, Akl Decl. ¶ 75). Although Patent Owner cites arguments presented on page 21 of the Petition, Patent Owner argues Petitioner’s Reply advances a new argument because it argues “that ‘control packet’ should be construed to mean ‘the header portion of a packet that can also include user data (a ‘data packet’).” Id. (citing Pet. Reply 7). According to Patent Owner “under Petitioner’s new and shifted interpretation ‘control packet’ refers to the header portion/part of any kind of packet, including data packets.” Id. arguments were new—which they are not (see, e.g., Pet. 20–21; Dec. to Inst. 16–19)—we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets,” as mentioned above. We further note that Patent Owner’s arguments implicate the proper construction of “control packet,” which we discuss in greater detail directly below. See Section VI.B herein.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“As the ’630 patent provides no reference to an industry-standard use of the terms “control packet” and “data packet,” we cannot determine from the ’630 patent whether there is a plain and ordinary meaning of the terms “control packet” and “data packet.” The record also does not provide sufficient information to determine the plain and ordinary meaning of “control packet” to an ordinarily skilled artisan. For example, Petitioner’s reference to Nandy as describing a control packet is not determinative. Pet. 20–21 (citing Ex. 1007, code (57), 2:52–54), Hr’g Tr. 14:26–15:2. Nandy describes a control packet as one that functions as a sensor, i.e., as a header packet injected into a network at an edge router to sense congestion along the path of aggregated data, such that the loss of a control packet slows the transmission of data. Ex. 1007, 5:22–30, 5:57–6:2, 7:7–18. Patent Owner acknowledges that packets can contain headers with control information, but defining a control packet that broadly “there would be no basis by which you could distinguish the control packet from a data packet.” Hr’g Tr. 22:24– 23:5, 40:4–16 (arguing that if information in a packet that routes the packet correctly is sufficient to qualify a packet as a control packet, “it would vitiate this specific limiting lexicography and render every packet that a router receives as control packet which is not consistent with the intrinsic evidence.”). According to Patent Owner, in the ’630 patent a control packet is “not a packet containing information to route a packet, it is a packet used to create the forwarding path, bring into existence the forwarding path.”). As discussed above, the ’630 patent does not describe the “required control data required to create the forwarding path” that characterizes a control packet, does not describe the “forwarding path” that data packets “do not leave,” does not preclude the forwarding path from including the common processor to which control packets are routed, does not describe how the forwarding path is determined, does not describe the processing of control packets that takes place at the common processor (except for marking the packets), does not describe a mechanism for distinguishing control packets from data packets, and does not preclude marking data packets. Based on the record, to a person of ordinary skill, the meaning of and practical significance of the ’630 patent’s distinction between a “control packet” and a “data packet” beyond the confines of the ’630 patent is not clear. All that can be said, based on ’630 patent’s description, is that the claimed “control packets” have the following characteristics: (1) they are packets that “are to be routed from the different inputs to the common (3) “comprise the required control data to create the required forwarding path 7 and might possibly be adapted.”8 Ex. 1001, 1:13–22. Therefore, we construe a “control packet” to be a packet with these three characteristics.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“4. Conclusion as to Claim 1 Having reviewed the arguments and evidence of record, we are not persuaded that Petitioner has demonstrated that Gouriellec discloses all the limitations of claim 1 for purposes of anticipation because Gouriellec does not explicitly distinguish control packets recited in limitation 1.b from data packets. Instead, Gouriellec describes a classifier that classifies inbound packets based on information in a header having source and destination addresses and port numbers to select traffic flows that are to receive a particular service. Ex. 1005, 4:44–49. Petitioner relies on the unrebutted testimony of Dr. Akl, which we find to be persuasive, for the proposition that a POSITA would have understood that “Gourillec is talking about control packets when its marker changes or ‘marks’ the information in a header.” Pet. 35, Pet. Reply 7 (citing Ex. 1003, Akl. Decl. ¶ 114). As Gouriellec concerns controlling flow of traffic into a node over a” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“construction above. See Section VI herein. Gourillec does not distinguish data packets from control packets, as those terms are used in the ’630 patent. Gouriellec discloses packets routed according to the MPLS protocol, i.e., a protocol that provides connection-oriented services that enable tunneling across a wide area network, on a pre-configured label switched path. Ex. 1005, 1:22–38. “A label switched path is a path through an MPLS network so that when a label is applied, traffic transits multiple routers in the LSP.” Id. at 1:30–32. In MPLS, a packet is assigned to an FEC just once as a short fixed length “label.” See Ex. 1008, 4–6. Although there is no further analysis of a packet’s network layer header, the label is used as an index into a table which specifies a next hop and a new label that replaces the old label. Ex. 1005, 1:39–45; Ex. 1008, 4–6. Thus, the packet contains the information required to create a forwarding path. As the packet is routed at least to a switch capable of doing label lookup and replacement, i.e., capable of processing, all the criteria of a control packet under our construction are met, i.e., the packets in Gouriellec are (1) packets that “are to be routed from the different inputs to the common processor;” (2) “in order to be processed by this common processor,” and (3) “comprise the required control data to create the required forwarding path and might possibly be adapted.” Given this understanding of “control packets” in Gouriellec, we now return to the last feature of the “marking” limitation, i.e., that all the marked packets must be “control packets.” See Section VI.A. herein. Petitioner has set forth evidence that Gouriellec’s marker sets or resets DiffServ codepoints (DCSP fields) that are in packet headers. See, e.g., Ex. 1005, 4:61–62; the MPLS protocol (see, e.g., Ex. 1005, 1:22–38), which means that the headers of all packets in Gouriellec include forwarding path information. See, e.g., Ex. 1008, 4–6. This supports Dr. Akl’s unrebutted testimony that a POSITA would have understood that “Gouriellec is talking about control packets when its marker changes or ‘marks’ the information in the header.” Ex. 1003, Akl Decl. ¶ 114. Thus, based on the complete trial record, we are persuaded that Gouriellec teaches or at least suggests that all marked packets are “control packets,” as that term is understood in the ’630 patent. We note that Patent Owner’s arguments to the contrary are not supported by any evidence or testimony that undermines Petitioner’s persuasive showing.” slip op. at 25
Patent outcomesUS 7,551,630 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,551,630 - Netgear, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00516 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3 are unpatentable as anticipated by Li, and claim 10 is unpatentable as obvious over Li and Perahia; the Board did not reach the other grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration of Dr. Akl, Petitioner contends that a person of ordinary skill in the art (POSITA) at the time of the invention of the ’096 patent would have had “a Bachelor’s degree in electrical engineering (or a similar degree) and 2–3 years working in the design or 4 U.S. Patent No. 8,014,366 B2, issued September 6, 2011, filed August 13, 2004 (Ex. 1006, “Wax”). development of wireless communication systems, or the equivalent,” wherein “[a]dditional education could substitute for professional experience, and vice versa, significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1003 ¶ 19). Patent Owner does not offer a definition for a POSITA. See PO Resp. 2. We adopt and apply Petitioner’s proposed definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’096 patent, the asserted prior art, and the testimony of Dr. Akl. We note that the applied prior art comports with this level of skill. See Okajima, 261 F.3d at 1355.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Phillips requires us to consider the prosecution history of a patent in construing the claims. Phillips, 415 F.2d at 1317. But Phillips also cautions that the prosecution history often is “less useful” than the specification: [L]ike the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. Id. Any ambiguity in the prosecution history makes it less relevant to claim construction. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002) (“It is inappropriate to limit a broad definition of a claim term based on prosecution history that is itself ambiguous.”); Northern Telecom Ltd. v. Samsung Elec. Co., Ltd., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“[C]onfusing statements in the prosecution history simply fail to overcome the ordinary meaning of the [disputed] limitation.”). Furthermore, the Federal Circuit has made it clear that disavowal of claim scope by a patentee requires “expressions of manifest exclusion or restriction.” Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009). More specifically, “[t]o operate as a disclaimer, the statement in the prosecution history must be clear and unambiguous, and constitute a clear disavowal of scope.” Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir 2019). We do not see in the ’096 patent prosecution history any clear and unambiguous waiver of “offset” timings for the claimed channel estimations “over said pilot interval.” See Ex. 1002, 126–128, 157, 174. This is evident from the office actions themselves and their context in the prosecution history, which we review below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In sum, for the reasons given, we do not agree with Patent Owner’s proposed construction for “over said pilot interval.” PO Resp. 4. We determine the term “said pilot interval” in the phrase “estimating [first/second] radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to have at least some overlap in timing. Id. Instead, we conclude the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. We do not provide any further constructions for “pilot interval” or any other claim terms. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). It is proper to take into account not only the literal and “specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly & Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
Patent outcomesUS 7,512,096 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,512,096 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2022-00479 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–7, 9–11, and 13–16 as obvious over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“This distinction is particularly significant because Harris describes that its low-power feature is realized by using “the test mode.” Ex. 1003, 4:64–65. The test mode uses a software-selected switch that allows the CPU to write to a register to control which power supply is provided to the memory. Id. at 3:9–18, 3:50–51. Thus, Harris describes that the low-power feature uses a software-defined switching threshold, and nothing about that threshold requires that it be the same as the threshold used for the failure mode. The failure mode, in contrast, is “a hardware controlled function” that monitors the voltage on the VDD terminal, and when that voltage “drops below a set level or threshold, the voltage on the Vstby terminal 132 is switched to power the memory 105 to sustain memory contents when either main or VDD power is failing.” Id. at 3:52–60. Accordingly, we do not agree with Patent Owner that “Harris’s system cannot use a threshold [for its low-power feature] lower than the power-failure detection threshold.” PO Resp. 11–12 (emphasis omitted). The two aspects use different mechanisms to control which power supply is provided to the memory. Relatedly, Patent Owner asserts that Petitioner fails to justify “why a POSITA would have been motivated to abandon the ‘failure mode’ in favor of pursuing the specific ‘low power feature.’” Id. at 14. Because Harris’s failure mode and low-power feature are distinct aspects of Harris’s operation, however, there would have been no need for skilled artisans to abandon one in favor of the other. In that regard, we credit Dr. Singh’s testimony that because Harris’s circuitry can be used for multiple functions, skilled artisans would have understood “how the operation of the circuitry would have been configured differently for those different functions or operations.” Ex. 1040 ¶ 9. Patent Owner argues additionally that, even if the low-power feature is distinct from the failure mode, Petitioner has not justified using the failure mode’s “set level or threshold” with a different threshold for the low-power feature. PO Resp. 13–14. But that argument ignores that the low-power feature uses software to control the switch, rather than the hardware-controlled failure mode, as described above. Because the low-power feature and failure mode are based on different controlling mechanisms, Harris already describes using different thresholds for switching the memory’s power supply in the two instances. And as Dr. Singh testifies, achieving the desired power savings or low-power operating parameters would have motivated skilled artisans to select a specific minimum operating voltage for the low-power feature. Ex. 1040 ¶ 9.” slip op. at 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))). Petitioner notes that the jury infringement verdict is on appeal. Pet. Reply 23. According to Petitioner, Patent Owner fails to show the verdict demonstrates commercial success with a nexus to the challenged claims. Id. at 24. Petitioner argues that the challenged claims were not the basis for customer demand of the accused products. Id. (citing Ex. 1044, 811:13– 812:24 (Intel employee Adam King testifying that Intel’s customers care about numerous technical attributes, including graphics performance for video editing, camera quality for video conferencing and power efficiency for laptops)). Petitioner notes that Patent Owner accused only the “C6 SRAM multiplexer” feature of infringing the ’373 patent (Ex. 1042, 453:20– 25; Ex. 1044, 815:16–816:21) and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 24 (quoting Ex. 1043, 690:19–691:24). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; Facebook, Inc. v. Express Mobile Inc., IPR2021-01457, Paper 38 at 76–80 (PTAB Mar. 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those claimed in the ’373 patent. Ex. 1043, 690:19–691:24; Ex. 1044, 815:16–816:21. That evidence persuades us that, regardless of a presumed nexus, the commercial success does not have a nexus with the challenged claims.” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We agree with Petitioner. Both Harris and the ’373 patent are in the field of memory power supply. While Harris describes a voltage-supply system allowing for a particular testing approach, its field is not limited to its primary purpose of soft-defect testing on-chip memory. Rather, Harris also describes that its system allows other features such as failure protection and a low-power feature. Ex. 1003, 3:50–67, 5:59–5:4. Thus, we find that Harris’s field is memory power supply, and more specifically, switchable memory power supplies. As discussed, the ’373 patent describes its related art as making tradeoffs between performance and power when choosing voltage and frequency for processors and memory. Ex. 1001, 1:12–25. While the ’373 patent describes determining the minimum operating voltage for each part and storing that determined value (id. at 2:3–37, 6:22–8:15), its disclosures are considerably broader in scope. The patent describes selecting memory voltage based on multiple considerations, such as using the logic voltage when it is higher than the memory minimum operating voltage, or a variety of minimum voltages depending on operating circumstances. Id. at 3:30–5:41. As to the system controlling a memory’s power supply, the ’373 patent describes mechanisms that may be used to control a memory’s power supply, such as power supply selector 21. Id. at 2:52–59, 5:42–58. It details operation of the power supply controller 28 and selector 21. Id. at 8:33–9:4. The ’373 patent describes alternatively that memory may be permanently coupled to a particular voltage bus that is scaled to provide the desired power. Id. at 2:59–61, 5:61–67. The disclosures regarding mechanisms for controlling the memory power supply show that the ’373 patent’s field is broader than just determining the minimum operating voltage. We find that the ’373 patent’s field includes switchable memory power supplies, supporting that Harris is from the same field as the ’373 patent. As to whether Harris is reasonably pertinent to the problem addressed by the ’373 patent, Petitioner contends that the ’373 patent addresses “lowering power consumption in integrated circuits, considering that ‘different types of circuitry within a data processing system may have different ranges of allowable operating voltages’ and that ‘the processor may be able to operate at a lower voltage than is possible for the memory.’” Pet. Reply 19 (quoting Ex. 1001, 1:12–25, 2:5–7). Petitioner contends that Harris addresses the same problem with its circuit to “ensure the memory is provided with sufficient voltage to avoid data loss.” Pet. 14–15 (citing Ex. 1003, 3:54–56, 3:64–67 (Harris’s disclosure of switching memory power supply “to avoid memory data loss”)). Patent Owner’s expert agrees that the ’373 patent addresses “the problem of providing different voltages to different parts of the circuit” to accommodate different “allowable operating voltages.” PO Resp. 49 (quoting Ex. 2052 ¶ 159). As discussed above, Harris discloses a mechanism for providing different voltages to different parts of its circuit, whether for testing or low-power operation. Ex. 1003, 3:50–67, 5:59–5:4. We find that Harris is reasonably pertinent to the problem of providing different voltages to different parts of the circuit. While the ’373 patent addresses other problems also, that does not undermine the problem to which Harris is reasonably pertinent. See Ethicon LLC v. Intuitive Surgical, Inc., No. 2021-1601, 2022 WL 1576779, at *4 (Fed. Cir. May 19, 2022) (nonprecedential) (holding that the patent owner’s identification of an additional problem beyond that supporting analogous art was irrelevant); Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1361 (Fed. Cir. 2020) (noting the analysis considers “one or more problems to which the claimed invention relates”). Accordingly, Harris is analogous art to the ’373 patent because it is both from the same field of endeavor and reasonably pertinent to a problem confronting the inventor of the ’373 patent.” slip op. at 25
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Patent Quality Assurance, LLC / Intel Corporation v. VLSI Technology LLCAll claims unpatentablePTAB · Jun 13, 2023 · IPR2021-01229 · APJ Jason W Melvin · IPR · Final written decision
Claims 1–16 are unpatentable as obvious: claims 1–7, 9–11, and 13–16 over Harris, Abadeer, and Zhang; claims 2, 11, and 12 with Cornwell; and claim 8 with Bilak.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“II. ANALYSIS A. CLAIM CONSTRUCTION Petitioner contends that no claim requires construction other than claim 14, which recites a “means for providing the operating voltage to the memory at a value at least as great as the minimum operating voltage in response to the operating value selected by the processor being below the 1 Our bracketed designations for limitations largely follow those used by the parties. See Pet. 25–46. 2 US 5,867,719, issued Feb. 2, 1999 (Ex. 1003). 3 US 2006/0259840 A1, published Nov. 16, 2006 (Ex. 1004). 4 US 2003/0122429 A1, published July 3, 2003 (Ex. 1005). 5 US 7,702,935 B2, issued Apr. 20, 2010 (Ex. 1006). 6 US 2005/0188230 A1, published Aug. 25, 2005 (Ex. 1007). minimum operating voltage.” Pet. 24, 64; Ex. 1001, 14:31–37. Petitioner points out that a district court construed the term as a means-plus-function term under 35 U.S.C. § 112, sixth paragraph, with the claimed function and a corresponding structure of the “power supply selector.” Id. at 64 (quoting Ex. 1028, 2). Patent Owner does not challenge or otherwise address that construction, and we apply it in this decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree. Primarily, Harris’s description of the low-power feature does not restrict the feature to a particular timing for switching the memory’s power supply. Instead, Harris uses “while” as a term of contrast— the memory receives the second power supply voltage, in contrast to the CPU, which receives the first power supply voltage. Ex. 1003, 4:66–5:2. Although Harris does not limit the low-power feature’s switching methodology, Petitioner explains that because Harris separately describes threshold-based voltage switching (in connection with the failure mode), implementing the claimed threshold-based switching in connection with the low-power mode would have involved using that known technique to achieve a predictable result (avoiding memory data loss). Pet. 32–33 (citing Ex. 1002 ¶ 76). We agree, and find that skilled artisans would have had reason to and would have known how to implement Harris’s low-power feature with the threshold-based switching described in Harris’s failure mode.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such a presumed nexus requires not only that a commercial product embodies the claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 22
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“and therefore cannot be used in an obviousness combination. PO Resp. 39– 52. To be analogous art, Harris must be in the same field of endeavor as the ’373 patent or be reasonably pertinent to the problem addressed by the ’373 patent. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).” slip op. at 24
Patent outcomesUS 7,523,373 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,523,373 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - Cisco Systems, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Jan 5, 2023 · IPR2021-01117 · APJ John A Hudalla · IPR · Final written decision
Claims 1–18 are unpatentable as obvious: claims 1–3, 5, 8–12, 14, 17, and 18 over Hurtta; claims 4 and 13 over Hurtta and Mizell; claims 6 and 15 over Hurtta, Rimoni, and Wilhoite; claims 7 …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Mir, Petitioner contends a person of ordinary skill in the art (“POSITA”) “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to wireless and cellular networking.” Pet. 16 (citing Ex. 1003 ¶¶ 20–21). Petitioner also contends a POSITA would have had an understanding of various communications protocols and packet-based networking topics and technologies. Id. at 15–16 (citing, inter alia, Ex. 1003 ¶ 20). Patent Owner neither disputes Petitioner’s definition of the level of ordinary skill nor offers a different definition. PO Resp. 7. We adopt Petitioner’s definition of the level of ordinary skill in the art. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’106 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Decision on Institution, the majority determined preliminarily that the ICME and the PEF need not be separate and distinct entities. Dec. on Inst. 12. The concurring judge found that it was unnecessary to decide this issue. Id., Concurrence at 1. Based on the entire trial record, we determine that we need not decide the issue of whether the ICME and the PEF must be separate and distinct entities. As discussed below, Petitioner puts forth persuasive evidence that the prior art renders some claims obvious even under Patent Owner’s proposal that the elements must be separate. Patent Owner argues that Petitioner’s late embrace of Patent Owner’s preferred claim interpretation regarding the ICME and the PEF amounts to an improper new construction that renders the Petition deficient under 37 C.F.R. § 42.104(b)(3)–(4). PO Sur-reply 1–4. We disagree. The Petition specifically contemplates a scenario where “Patent Owner argues that claim 1 requires the ICME to be a completely separate device from the policy enforcement point (PEF).” Pet. 39. Petitioner puts forth unpatentability arguments based on Hurtta for that scenario (id.) that we find persuasive, as discussed below. Thus, we do not agree that the Petition is deficient. The parties do not put forth any other claim construction arguments. For these reasons, we determine that no aspects of the challenged claims require explicit construction. See, e.g., 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
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Petitioner contends Hurtta qualifies as prior art under 35 U.S.C. § 102(b) based on its publication date. Pet. 17–18. Patent Owner does not contest the prior art status of Hurtta. We determine that Hurtta qualifies as prior art under 35 U.S.C. § 102(b) because Hurtta’s publication date of June 23, 2005, is more than one year before the U.S. filing date of the challenged claims, which is June 7, 2007. Ex. 1001, code (22); Ex. 1005, code (43).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded that gateway 40, or a portion thereof, acts as the recited “policy enforcement point (PEF)” because it “enforces the policy decision in the provisioning of the service.” Ex. 1005 ¶ 62. We also are persuaded that policy control entity 52 (i.e., the “policy manager”) sends policy decisions to gateway 40 in decision message 7. See, e.g., Ex. 1005 ¶ 62, Fig. 3. We additionally are persuaded by Petitioner’s contentions about separating gateway functions into separate components. See, e.g., Ex. 1003 ¶ 108. Dr. Mir’s testimony about how to interpret Hurtta’s teachings on integration is only countered by Patent Owner’s unsupported attorney argument, which is not evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, Dr. Mir’s unrebutted testimony is that an ordinarily skilled artisan considering Hurtta’s teaching of integration would also know to separate components. Ex. 1003 ¶ 108. Beyond Hurtta’s teaching of integration, Dr. Mir also propounds another rationale: that it would have been obvious to make different subcomponents within the gateway for policy enforcement and for determining the type of access network because these subcomponents would involve different techniques. Id. Petitioner additionally notes (Pet. Reply 12) how the patentees of the ’106 patent stated during prosecution that the precise form of system elements is not important (see Ex. 1002, 89–90), which also supports splitting gateway functions into subcomponents. We do not agree with Patent Owner’s argument (PO Sur-reply 11–12) that the cited prosecution history pertains only to “whether claimed components may be hardware versus software.” Even if it were so limited, it would still support Petitioner’s premise that separating gateway functions would have been obvious. Finally, we do not agree with Patent Owner (see PO Resp. 19–20; PO Sur-reply 10–11) that Petitioner’s contentions are internally inconsistent. As noted by Petitioner (Pet. Reply 11), Petitioner has never contended that determining means 41 corresponds to the recited PEF. Having considered the entire trial record, we determine that a preponderance of the evidence supports Petitioner’s contentions about the obviousness of separating Hurtta’s gateway functions.” slip op. at 20
Patent outcomesUS 8,191,106 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,191,106 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 21, 2022 · IPR2021-00959 · APJ John A Hudalla · IPR · Final written decision
Claims 1–3, 6, 7, 9, and 18 are unpatentable as anticipated by Kodialam; the Board did not reach the Kodialam–AAPA obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Jeffay, Petitioner contends a person of ordinary skill in the art (or “POSITA”) would have possessed “a bachelor’s degree in computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience managing and configuring computer networks, including experience with networking protocols and network routing.” Pet. 15 (citing Ex. 1003 ¶ 54). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’781 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Petitioner notes that the parties have put forth certain terms for construction in the underlying litigation, but Petitioner contends that no terms require construction in this case. Pet. 15–16. Patent Owner also does not put forth any terms for construction. PO Resp. 5–6. We determine that no terms require explicit construction. See, e.g., 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
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner contends that Petitioner fails to cite any express teaching of the “identifying” step in Kodialam, and, instead, “the Petition relies solely on Dr. Jeffay’s testimony in an attempt to fill the evidentiary gap.” PO Resp. 14–15 (citing Pet. 23–24; Ex. 1003 ¶ 67); PO Sur-reply 13. Patent Owner further contends that Dr. Jeffay’s supporting testimony “is untethered to any supporting evidence.” PO Resp. 15; see also PO Sur-reply 14–16 (similar arguments). Patent Owner further disputes Petitioner’s analysis to the extent that Dr. Jeffay references critical links that are used for the generation of a multicast routing tree, not a unicast transmission. PO Resp. 16–17 (citing Ex. 1004, Abstr.). Contrary to Patent Owner’s arguments, however, Petitioner cites directly to Kodialam in conjunction with Dr. Jeffay’s testimony. In particular, Petitioner cites Kodialam’s disclosure of solving “the maximum multicast flow problem” by first computing “critical links.” Pet. 23–24 (quoting Ex. 1004, 10:49–57). Petitioner also cites Kodialam’s claim 7 (id. at 24), which discloses “generat[ing] the set of critical links for sets of unicast pairs, each unicast pair defined between the source and one of the plurality of receivers.” Ex. 1004, 16:62–65. These disclosures both support Dr. Jeffay’s testimony and independently establish that Kodialam describes identifying unicast traffic requirements, because Kodialam’s system identifies and prioritizes critical unicast links. See Ex. 1004, 10:49–57, 11:9–26, 16:62–65. For similar reasons, these disclosures also describe the identification of the “first traffic configuration” of unicast packet traffic. See id. Thus, we are persuaded that Kodialam discloses the “identifying” step of claim 1.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Petitioner contends Kodialam qualifies as prior art under 35 U.S.C. § 102(e) based on its filing date. Pet. 16–17. Patent Owner does not dispute the prior art status of Kodialam. We have no evidence of an invention date other than the earliest possible effective filing date of the challenged claims. We determine that Kodialam qualifies as prior art under 35 U.S.C. § 102(e) because Kodialam’s filing date of September 29, 2000, is before the earliest effective filing date of the challenged claims, which is November 21, 2003. Ex. 1001, code (22); Ex. 1004, code (22).” slip op. at 12
Patent outcomesUS 7,382,781 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,382,781 - ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 14, 2022 · IPR2021-00699 · APJ John A Hudalla · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–5 over Cheng, claims 1–3, 6–11, and 12–18 on the stated Cheng-based grounds, including combinations with Shirali and Douglas.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”), filed a Preliminary Response. Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on October 18, 2021, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“IV. CONCLUSION43 Petitioner has shown, by a preponderance of the evidence, that: (1) claims 1–5 are anticipated by Cheng; (2) claims 1, 2, 6–10, and 12–18 would have been obvious over” slip op. at 83
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Petitioner’s rationale for combining Nishio with Cheng is faulty because it misstates Nishio’s teachings. Dec. on Inst. 40–41. We found that “Nishio does not teach that setting an arbitrary number of subcarriers avoids reporting for each subcarrier,” and, rather, that “Nishio achieves this efficiency by averaging CIRs of the usable blocks and transmitting to the base station only a CQI corresponding to the averaged CIR together with the block numbers.” Id. (citing Ex. 1009 ¶¶ 60, 66). Accordingly, we determined that Petitioner had not established a reasonable likelihood that the subject matter of claim 4 would have been obvious over the combination of Cheng and Nishio. Id. at 41.” slip op. at 77
Patent outcomesUS 7,742,534 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,742,534
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.