- Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Technology (Shenzhen) Co., Ltd. And Throughtek Co., Ltd.All claims unpatentablePTAB · Dec 15, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7–13, 15–19, and 23–25 are unpatentable: claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 as anticipated by Zhang; all challenged claims also as obvious over at least one …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 5 (citing Ex. 1003 ¶¶ 13–15). Patent Owner does not contest Petitioner’s proposal or provide a proposal of its own. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“construction of “feature flag” is inconsistent with the language of claim 8, which states that “the feature flag indicates that the running state of the second apparatus is the sleep state.” Petitioner also argues that Patent Owner’s proposal is not supported by claim 24, which depends from claim 23 and states that “the feature flag is located at a header of the sleep login packet.” Id. at 3. We agree with Petitioner. The plain language of claim 8 states what a feature flag indicates. Claim 24 recites where the feature flag is located. Neither claim suggests any of Patent Owner’s additional limitations.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“[A] prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016) (quoting In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (alteration by Federal Circuit)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Id. (quoting Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (alteration by Federal Circuit); In re Petering, 301 F.2d 676, 681 (CCPA 1962)). For the reasons explained below, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 1, 7, 8, 10, 11, 15, 16, 18, 19, and 23–25 are anticipated by Zhang. slip op. at 16
Patent outcomesUS 10,602,448 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00879 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 are unpatentable as anticipated by Iida; claims 3, 10–12, and 26 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that Petitioner’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24. Patent Owner does not challenge this determination and states that it has applied the Board’s adopted definition of one of ordinary skill in the art. PO Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not have any effect on the opinions presented in his declaration, even though Dr. 6 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. Butler had previously presented a different proposed qualifications. Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill, which is that a person of ordinary skill in the art should have:” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “interactive user interface” In the Decision on Institution, we construed the term “interactive user interface” (“IUI”) as “a display with which a user may interact to result in the portable device taking action responsively.” Inst. Dec. 19. The parties have presented additional arguments in additional briefing on the term’s construction, which we have further considered, and, as discussed below, we modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3. a. Petitioner’s Assertions In the Petition, Petitioner asserts that the term “interactive user interface” should be interpreted as “a display with which a user may interact to result in the computer taking action responsively.” Pet. 14. Petitioner argues that this proposed interpretation is consistent with the plain and ordinary meaning of the term. Id. at 13. Petitioner also contends that although the term “interactive user interface” is not used in the ’969 patent specification, the specification consistently describes the terminal output component as a “display mechanism,” and the interactive user interface is presented on the terminal output component in the claims. Id. (citing Ex. 1001, 4:40). Petitioner contends that a number of displays in the ’969 patent respond to text inputs from an input component to elicit a responsive action, and refers to an example of the input of registration information in screen 515 in Figure 5, where, if the input is successful, follow-up screen 517 is produced, but otherwise there is an error message. Id. at 13–14 (citing Ex. 1001, 9:52–54, 7:53–56). In its Reply, Petitioner asserts that the ordinary meaning of the term “interactive user interface” is “a presentation (display) with which a user may interact to result in the computer (portable device) taking action responsively.” Pet. Reply 1. This is similar to the construction that Petitioner previously proposed in the Petition, however, Petitioner now proposes that the “computer” can be considered to be a “portable device,” and a “display” can also be considered to be a “presentation. See Pet.14. According to Petitioner, the claims require that the interactive user interface be presented on the terminal output component. Pet. Reply 1. Petitioner argues that the specification describes that it is a portable device that responds to user interaction with the IUI, such as the interaction with a login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001, 7:55–56). Petitioner asserts that the claims require that it is the portable device that responds to user interaction, with the “fourth program code” executing in response to user interaction with the interactive user interface. Id. Petitioner compares the claim of the parent ’047 patent, which was narrowed to refer to “the interactive user interface is configured to enable the user to cause the portable device processor to execute program code stored on the portable device memory,” to the claims here. Id. Petitioner also asserts that “‘[p]resentation’ is used and described in the ’969 patent as corresponding to a ‘display.’” Id. at 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“2. Analysis A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“obviousness, we need not determine whether Patent Owner’s evidence of objective indicia of nonobviousness weighs even further against a conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board decision determining that petitioner had not shown unpatentability, that “objective indicia of nonobviousness” “need not [be] addressed” because the court “affirmed the Board’s findings regarding the failure of the prior art to teach or suggest all [claim] limitations”); Palo Alto Networks, Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-precedential) (affirming Board decision holding that petitioner failed to establish unpatentability due to a lack of disclosure of a claim limitation, without reaching secondary considerations, and holding that “it was not necessary for the Board to consider” expert testimony “limited to the issue of secondary considerations”).” slip op. at 78
Patent outcomesUS 9,059,969 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,059,969 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“For these reasons, we find that Petitioner has shown by a” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94
Patent outcomesUS 9,774,703 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,703 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision
Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.
RulingsFinal written decision- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22
Patent outcomesUS 8,001,434 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,001,434 - SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision
Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25
Patent outcomesUS 8,359,501 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,359,501 - Palo Alto Networks, Inc. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentablePTAB · Apr 11, 2017 · IPR2016-00159 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 2, and 6 are unpatentable over Swimmer; claims 3–5 and 10–15 were not shown unpatentable on the grounds decided.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“11 Petitioner does not allege, and we do not find, that Martin teaches or suggests the “Downloadable scanner” and “database manager” elements that we find to be lacking from Swimmer in our analysis of claim 10 in Section III.B.4.a.iv, supra. Accordingly, for the additional reasons set forth in that section, we also are not persuaded that Petitioner has carried its burden with respect to claims 12–14, which each depend from claim 10.” slip op. at 58
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“5. Secondary Considerations Patent Owner contends that its patented inventions have received” slip op. at 60
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“accord to the evidence, rather than its admissibility, and are not the proper subject of a motion to exclude. Although we recognize that Mr. Hawes did not begin working at Virus Bulletin until 2006 and did not personally attend the 1995 Virus Bulletin Conference (see Ex. 2045, 7:8, 13:17–19), we credit his testimony as based on his personal knowledge of Virus Bulletin’s regular business practices and his understanding of Virus Bulletin’s business records derived from his employment at and role as Chief of Operations at Virus Bulletin (see id. at 12:25–13:9; Ex. 1088 ¶¶ 1–5; Ex. 1089 ¶¶ 1–9; see also Fed. R. Evid. 803(6) (records kept in the course of regularly conducted business activity not excluded by hearsay rule)). Moreover, we agree with Petitioner that because Mr. Hawes’s testimony is based on his perceptions, rather than on any alleged scientific or specialized knowledge, Patent Owner’s reliance on Federal Rule of Evidence 702 (“Testimony by Experts”) is misplaced. See Pet. Opp. Mot. Excl. 10. Accordingly, we deny Patent Owner’s Motion to Exclude as it relates to Exhibits 1088 and 1089.” slip op. at 76
- ExcludeMotion to exclude, deniedMixed
“general approach for considering challenges to the admissibility of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00053, slip op. at 19 (PTAB May 1, 2014),” which stated that, “similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented.” Id. (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”)); see also Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). In reaching our decision, we have considered and weighed the testimony provided by Dr. Goodwin and Dr. Medvidovic, as well as Petitioner’s arguments relying on that testimony, in light of Patent Owner’s arguments, but we decline to exclude the cited exhibits or the portions of the Reply citing them. Accordingly, Patent Owner’s Motion to Exclude is denied to the extent it relates to Exhibits 1088 and 1089.” slip op. at 75
Patent outcomesUS 8,677,494 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,677,494 - Palo Alto Networks, Inc. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentablePTAB · Apr 11, 2017 · IPR2016-01174 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 2, and 6 are unpatentable as obvious over Swimmer; claims 3–5 and 10–15 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“a preponderance of the evidence that claims 1, 2, and 6 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) over Swimmer. Petitioner has not demonstrated that claims 10, 11, and 16 are unpatentable over Swimmer or that claims 3–5 and 12–14 are unpatentable over the combination of Swimmer and Martin. V. ORDER Accordingly, it is ORDERED that claims 1, 2, and 6 of the ’494 patent have been shown to be unpatentable; FURTHER ORDERED that claims 3–5 and 10–15 of the ’494 patent have not been shown to be unpatentable;” slip op. at 82
- Skill levelSkill level board ownDecided for patent owner
“2. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“1. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” 550 U.S. at 418. Rather, to prove obviousness, there must have been, at the time of invention, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. In this case, we are not persuaded that Petitioner has identified such a reason to combine the Martin’s teachings with those of Swimmer in the fashion required by dependent claims 3–5 and 12–14. The burden to prove the unpatentability of these challenged claims rests with Petitioner, and we conclude for the foregoing reasons that Petitioner has not carried its burden.” slip op. at 60
Patent outcomesUS 8,677,494 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,677,494 - Symantec Corp. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentablePTAB · Mar 15, 2017 · IPR2015-01892 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 2, and 6 are unpatentable over Swimmer under § 103; claims 5, 10, 11, 14, and 15 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“consideration of the Preliminary Response (Paper 7) of Patent Owner, Finjan, Inc., we instituted a trial pursuant to 35 U.S.C. § 314(a) with respect to claims 1, 2, 5, 6, 10, 11, 14, and 15 and subsequently joined Case IPR2016-00890 with the instant case. Paper 9 (“Decision on Institution” or “Dec. on Inst.”); see also Paper 30 (copy of decision instituting inter partes review in Case IPR2016-00890 and granting motion for joinder; also filed as IPR2016-00890, Paper 8).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Case IPR2016-00890 has been joined with the instant proceeding.” slip op. at 1
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’494 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. Medvidovic’s assessment.” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“As explained in Section III.B.4.a.i, supra, we are persuaded by Dr. Hall-Ellis’s testimony that Swimmer was publicly available at least as early as December 1995 and is, accordingly, prior art at least under 35 U.S.C. § 102(a),6 as well as that Exhibit 1005 represents an authentic 6 As further mentioned in Section II.B, supra, we determined in our Decision on Institution in Case IPR2016-00159 that the ’494 patent is not entitled to any earlier priority date than the November 6, 1997, filing date of the ’388 application, based on the record then before us in that case. See IPR2016- 00159, slip op. at 10–13 (PTAB May 13, 2016) (Paper 8). Because that date is more than one year after December 31, 1995, Swimmer would also be prior art under 35 U.S.C. § 102(b) based on the December 1995 publication date. copy of Swimmer and Exhibit 1010 represents an authentic copy of the Virus Bulletin Proceedings within the meaning of Federal Rule of Evidence 901. Further, Federal Rule of Evidence 401 provides that evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence” and “the fact is of consequence in determining the action.” Both the Federal Circuit and the Board have recognized that there is a “low threshold for relevancy.” See, e.g., OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., Case IPR2014-00025, slip op. at 44 (PTAB Mar. 25, 2015) (Paper 45). There is no question on this record that Swimmer is relevant to the patentability of the challenged claims in this case. Accordingly, we deny Patent Owner’s Motion to Exclude as to Exhibits 1005 and 1010.” slip op. at 62
Patent outcomesUS 8,677,494 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,677,494
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.