- Google LLC v. Parus Holdings, Inc.Rehearing grantedPTAB · Sep 18, 2023 · IPR2022-00279 · APJ Patrick M Boucher · IPR · Rehearing
The Board granted rehearing and instituted review of claims 1–4 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Kovatch and Burrows.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For purposes of this Decision, we thus make a preliminary determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29. Petitioner’s element-by-element analysis explains Petitioner’s position as to how each limitation of independent claims 1 and 2 is met within such a combination. Id. at 14–32. Although Patent Owner makes a number of arguments in its Preliminary Response why the combination does not meet certain limitations, those arguments are precluded by our preliminary determination that collateral estoppel applies. See Prelim. Resp. 29–44.7 We have thus re-evaluated the parties’ arguments in light of the findings made in the 846 IPR, and affirmed by the Federal Circuit, and we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows. We accordingly grant Petitioner’s Rehearing Request and institute an inter partes review of all claims on all grounds asserted in the Petition.8 See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 20
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“The party seeking to invoke collateral estoppel must show: “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against who collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.” Google, 54 F.4th at 1381. Each of these requirements appears to be met with respect to the issue of whether Kovatch discloses rankings associated with the order in which web site addresses are accessed. First, the claim limitations at issue in the two proceedings are sufficiently similar to raise the issue of collateral estoppel. See Ohio Willow Wood, 735 F.3d at 1342 (“If the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies. . . . Thus, the mere use of different words in these portions of the claims does not create a new issue of invalidity.”). For example, claim 1 of the ’705 patent recites “a rank number assigned to each one of said web sites and stored in said database” and “access[ing] one of said web sites having the highest said rank number,” while claim 10 of the ’431 patent recites “a ranking associated with each said web site address, said ranking indicating the order in which the plurality of pre-selected web sites are accessed.” Ex. 1001, 19:58–59, 19:65–66; 846 IPR, Ex. 1001, 21:9–11.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determination that collateral estoppel precludes Patent Owner from relitigating the issue of whether Kovatch teaches a ranking associated with web site addresses indicating the order in which to access a plurality of preselected web sites. In challenging independent claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Kovatch and Burrows, the Petition presents an element-by-element analysis to support its position. Pet. 14–32. That analysis relies on Kovatch’s disclosure of the HeyAnita system for accessing web sites to retrieve information a user requested, and relies on Burrows for disclosure of a system for ranking database records that are “presented to the users in a rank order where the pages having a higher rank are presented first.” Id. at 12–13 (citing Ex. 1006, 27:28–32, 32:14–47). Petitioner reasons that a person of ordinary skill in the art “would have found it obvious to apply Burrows’s numbered ranking and polling approach to Kovatch’s destination tree to better identify and present the records of the most interest to the user.” Id. at 13 (citing Ex. 1006, 3:56– 58). In particular, because Burrows explains that “there needs to be a way to rank order the list in a meaningful manner,” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply Burrows’s numbered ranking to Kovatch’s destination tree web pages to provide those of interest first.” Id. (citing Ex. 1002 ¶ 115); Ex. 1006, 27:28–29.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,721,705 - Snap Inc. v. You Map Inc.All claims unpatentablePTAB · Aug 31, 2023 · IPR2022-00568 · APJ Jason M Repko · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Feldman and Jackson, or Feldman, Jackson, and Rush; the contingent motion to amend is granted.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer science, or a related field, plus two years’ work or research experience with location-based content delivery and/or visualization.” Pet. 5 (citing Ex. 1003 ¶¶ 19– experience and vice versa.” Id. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, testifies that he “generally agree[s]” with Petitioner’s proposed articulation, and provides substantially the same expression of the level of ordinary skill in the art. Shamos Decl. ¶¶ 30–31. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Although Patent Owner appears to argue that applying the preference factors to a general score does not encompass weighting the general score’s components (see, e.g., id. at 10–12; Sur-reply 13–16), this is not reflected in Patent Owner’s proposed construction (PO Resp. 12). Patent Owner’s construction provides no limitation on how the preference factors are applied to a general score. See id. To the extent Patent Owner argues that the phrase “applied to,” as recited in the claim, excludes such component-based weighting, we disagree. Rather, the record better aligns with Petitioner’s argument that “applied to” involves a linear combination of values, which could be the values of the general score’s components. See Pet. 30–31. Petitioner’s position is supported by the plain language of the claim, the ’727 patent’s discussion of weighted aggregation, and Mr. William’s testimony—all of which indicate that weighting the component scores is encompassed by claim 1. As for the plain language, the claim does not define how the factors are “applied to” the general score. Rather, the claim only recites that they are. In the context of the claim, the preference factors are applied to the general score. Patent Owner does not dispute this. PO Resp. 12. Claim 1 further recites that the customized score is based on the application of the preference factors to the general score. Ex. 1001, 23:14–27. We note that the generate the combined ranking, which is then used for the recited selection. Beyond that, the claim does not specify how the two rankings are used or how the combined ranking must be generated. Thus, under the claim’s plain language, the customized score can be used to rank the posts and is based on the general score. Id.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“adequately supported. We find that Mr. William’s declaration is adequately supported. This is not case where an expert “does not disclose the underlying facts or data on which the opinion is based.” See 37 C.F.R. § 42.65(a). Rather, Mr. Williams adequately supports his testimony about the second preference factor with reasoning based on Jackson’s teachings about how the social-network distance is used to weight the global score. See, e.g., Williams Decl. ¶ 133 (citing Ex. 1006, Fig. 4A, 16:23–25, 58–60). weighting criteria can be used together. Id. ¶¶ 147–149 (citing Ex. 1006, 3:57–44:22, 5:53–58, 9:54–67, 13:17–22, 17:47–67). Mr. Williams’s analysis relies on Jackson’s discussion of using multiple factors to score a post. Ex. 1006, 17:47–55, cited in Williams Decl. ¶ 147; see also Pet. 42–43; Reply 9. Mr. Williams also cites Jackson’s discussion of how social-network distance and geographic distance can be used together. Williams Decl. ¶ 147 (citing Ex. 1006, 3:57–4:22). We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144). We disagree with Patent Owner’s argument that neither Petitioner nor” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner that Jackson adequately supports this part of Mr. Williams’s analysis. Reply 7–9. Specifically, Jackson discloses that a determination may use social-network distance to “modify the criteria” that it uses to provide posts to users. Ex. 1006, 3:66–4:1, cited in Williams Decl. ¶ 147. Jackson further explains how geographic distance can be used in addition to other criteria: “Transmitting the post to the second computing device may be dependent upon determining that the criteria is met and determining that the posting location is within the threshold distance.” Id. at 4:19–22 (emphasis added), cited in Williams Decl. ¶ 147. This is consistent with Jackson’s teaching that a post may be recommended based on several factors and for several reasons. Id. at 17:47–67, cited in Williams Decl. ¶ 147. Also, Jackson explains how the global score, which Petitioner mapped to the recited “general score,” is used to generate a post’s score: “[A] particular post’s global score . . . is multiplied by, divided by, or summed with a distance between” a user and the post’s author. Id. at 9:54–67, cited in Williams Decl. ¶ 148. Jackson weights a post’s global score against a position of the posts author in a social graph. Id. at 9:25–53. Mr. Williams testifies that it is obvious and conventional to generate the modified scores embodiment. Williams Decl. ¶ 144. This is supported by Jackson. In another example cited by Petitioner, Jackson multiplies a post’s global score by a geographic distance to generate a personal score. Id. at 21:60–22:5, cited in Pet. 37, 39, 43. Thus, Petitioner has shown Jackson teaches or suggests applying two different sets of preference factors to a post’s global score. Pet. 41 (citing Williams Decl. ¶ 144).” slip op. at 32
Patent outcomesUS 10,616,727 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,616,727 - Sophos Ltd. / Sophos Inc. v. Webroot Inc.Institution deniedPTAB · Aug 14, 2023 · IPR2023-00528 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were unpatentable over Ideses, Mori, or their combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we find that Petitioner has failed to show that Ideses or Mori teaches or suggests “extracting a plurality of static data points from an executable file” and “generating a feature vector from the plurality of static data points using a classifier trained to classify the plurality of static data points based on a collection of data,” where “one or more features of the feature vector are selectively turned on or off based on whether a value of one or more static data points from the plurality of extracted static data points is within a predetermined range,” as recited in each independent claim.4 III. CONCLUSION We determine that Petitioner has not established a reasonable likelihood of proving that at least one challenged claim of the ’844 patent is unpatentable over the cited prior art. We accordingly do not institute an inter partes review.5 IV. ORDER For the reasons given, it is ORDERED that no inter partes review is instituted in this proceeding.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that the claims are directed to the classification stage, as they require “extracting a plurality of static data points from an executable file” and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the feature vector generated from the static data points that were extracted from the executable file is used “to determine whether the executable file is harmful,” confirming that the claimed method is about classification of an executable file, not creation of a classifier. We also agree with Patent Owner that neither Ideses nor Mori teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points extracted from a file being analyzed are selectively turned on or off based on the value of the static data point.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,599,844 - Dr. Reddy’S Laboratories, Inc. v. Genentech, Inc., Hoffman-La Roche AG, And Abbvie Inc.Rehearing grantedPTAB · Aug 10, 2023 · PGR2022-00023 · APJ Jeffrey N Fredman · PGR · Rehearing
On Patent Owner’s rehearing request, the Board held claim 25 unpatentable under § 112(a) because it depends from claim 14, which lacks written description support.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We therefore agree with Petitioner that we overlooked the correct dependency of claim 25. Claim 25, as a claim dependent from claim 14, lacks written descriptive support because claim 25 fails to cure the absence of descriptive support for claim 14.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“In the Final Written Decision, we determined that claim 14 lacked descriptive support. We noted that Claim 14, in particular, recites a GDC-0199 dosing regimen “compris[ing] a dose of 20 mg per day for one week, a dose of 50 mg per day for one week, a dose of 100 mg per day for one week, a dose of 200 mg of GDC-0199 per day for one week, and a dose of 400 mg per day.” Unlike for claim 1, such disclosure is not found in a single example, but results from picking and choosing three separate selections from column 24. “The written description requirement is not met when, as here, the specification provides at best disparate disclosures that an artisan might have been able to combine in order to make the claimed invention.” Flash-Control, LLC v. Intel Corp., 2021 WL 2944592 *4 (Fed. Cir. 2021) (citing Ariad, 598 F.3d at 1352.)” slip op. at 3
§ 112 disclosurePatents in suitUS 10,993,942 - PTAB · Aug 8, 2023 · IPR2023-00546 · APJ Robert A Pollock · IPR · Institution
Instituted IPR on claims 1–5, 9–11, 13, 18, 19, and 28–30; Petitioner showed a reasonable likelihood of unpatentability under each asserted Ley and Newman anticipation and obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Quackenbush, Petitioner asserts that a person of ordinary skill in the art (“POSA”) would have had: 1) an advanced degree (such as an M.D. or the equivalent of a Ph.D. in a life or physical sciences, engineering, or mathematics discipline) . . . 2) an understanding of various sequencing and next generation sequencing methods, sample preparation methods, targeted enrichment methods, bioinformatics methods for interpreting sequencing data, and methods for identifying genetic variants in a sample . . . . technology to conditions associated with nucleic acid variation, such as cancer, non-invasive prenatal testing, and transplant rejection . . . [and] 4) an understanding of cancer biology as it relates to mutations associated with tumor diagnosis, progression, and treatment, as well as awareness of the various types of mutations that can occur in and influence the course of a patient’s cancer. Pet. 4–5 (citing Ex. 1061 ¶ 37) (numbering added). Patent Owner does not presently challenge Petitioner’s definition. Prelim. Resp. 9. Based on the record before us, Petitioner’s proposed definition is consistent with the level of skill indicated in the cited references and the problems addressed in the ’611 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we provisionally adopt Petitioner’s proposed definition of the person of ordinary skill in the art. C. Claim Construction” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, “the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Moreover, “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Considering the record before us, the preamble of claim 1 merely recites a purpose or intended use for the claimed method. In general, step (a) in the body of claim 1 entails obtaining sequence data from at least one biological sample from a subject. In step (b) the sequence data is used in to identify a set of genetic variants present in the biological sample. Step (c) entails creating a probe set corresponding to identified genetic variants. In step (d) the probe set is used to selectively enrich or amplify those variants if present in a second biological sample from the same or related individual, and thereby create a sequencing library. This library is sequenced in step (e) to identify the presence or absence of at least a subset of the genetic variants identified in step (b). As such, steps (a) through (e) define a complete invention, with the preamble merely stating a 4 To the extent Patent Owner maintains that the preamble is both limiting and distinguishes over the applied prior art, Patent Owner should clearly and explicitly identify during trial how it proposes the preamble should be construed—identifying evidentiary support for such construction according to well-established precedents. out the positively recited steps of the claim. As such, we do not presently view the preamble of claim 1 to be limiting and accord it no patentable weight.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“nucleic acid probe molecules” Claim step 1(c) recites “obtaining a probe set comprising a plurality of nucleic acid probe molecules . . . configured to selectively enrich or amplify sequences.” Relying on the testimony of Dr. Quackenbush and disclosure of the ’611 patent, Petitioner contends that one of ordinary skill in the art “would have understood that the claimed ‘nucleic acid probe molecules’ include PCR primers, hybrid capture baits, and other such nucleic acid probe molecules for selectively amplifying or enriching sequences.” Pet. 17–18 (citing Ex. 1061 ¶ 98; Ex. 1001, 4:54–55, 5:16–18, 6:64–67). At this stage of the proceeding, Patent Owner does not address the meaning of “nucleic acid probe molecules.” Although the term is not presently contested, Petitioner’s definition is reasonable in light of the present record, and we provisionally adopt it for clarity. slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,450,611 - PTAB · Aug 8, 2023 · IPR2023-00545 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–9, 13–19, and 21–29 on all three grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’783 patent is unpatentable, we institute an inter partes review of all challenged claims on each of the grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial) (“Guidance”). C. Real Parties-in-Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the testimony of Dr. Quackenbush, Petitioner asserts that a person of ordinary skill in the art (“POSA”) would have had: 1) an advanced degree (such as an M.D. or the equivalent of a Ph.D. in a life or physical sciences, engineering, or mathematics discipline) . . . 2) an understanding of various sequencing and next generation sequencing methods, sample preparation methods, targeted enrichment methods, bioinformatics methods for interpreting sequencing data, and methods for identifying genetic variants in a sample . . . . 3) an understanding of clinical applications of sequencing technology to conditions associated with nucleic acid variation, such as cancer, non-invasive prenatal testing, and transplant rejection . . . [and] 4) an understanding of cancer biology as it relates to mutations associated with tumor diagnosis, progression, and treatment, as well as awareness of the various types of mutations that can occur in and influence the course of a patient’s cancer. Pet. 4–5 (citing Ex. 1020 ¶¶ 35) (numbering added). Patent Owner does not presently challenge Petitioner’s definition. Prelim. Resp. 11. Based on the record before us, Petitioner’s proposed definition is consistent with the level of skill indicated in the cited references and the problems addressed in the ’783 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we provisionally adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, “the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Moreover, “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Considering the record before us, the preamble of claim 1 merely recites a purpose or intended use for the claimed method. In general, steps (a) through (c) in the body of claim 1 require the use of “a personalized probe set” to identify the presence or absence of genetic variants in a subject, whereupon this information is used to generate a report in step (d). We presently read the body of claim 1 to define a 7 Pointing to isolated passages in the Specification, Patent Owner further contends that, “methods that existed at the time of invention were specific to a particular disease or cancer rather than personalized to a specific subject’s family genetics,” whereas the claimed method “is directed to personalized genetic testing and is ‘better focused on the personal characteristics of the subject.’” Prelim. Resp. 20–21 (citing Ex. 1001, 4:37–47, 31:27–28). We find this argument confusing, as we do not presently read the challenged claims as limited to a “subject’s family genetics.” 8 To the extent Patent Owner maintains that the preamble is both limiting and distinguishes over the applied prior art, Patent Owner should clearly and explicitly identify during trial how it proposes the preamble should be construed—identifying evidentiary support for such construction according to well-established precedents. complete invention, with the preamble merely stating a purpose or intended use, or, in another sense, simply the result of carrying out the positively recited steps of the claim. As such, we do not presently view the preamble of claim 1 to be limiting and accord it no patentable weight.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“2) “nucleic acid probe molecules” Claim 1 recites the use of “nucleic acid probe molecules . . . configured to selectively enrich or amplify sequences.” Relying on the testimony of Dr. Quackenbush and disclosure of the ’783 patent, Petitioner contends that one of ordinary skill in the art “would have understood that the claimed ‘nucleic acid probe molecules’ include PCR primers, hybrid capture baits, and other such nucleic acid probe molecules for selectively amplifying or enriching sequences.” Pet. 15 (citing Ex. 1020 ¶ 95; Ex. 1001, 4:60–61, 5:23–25, 7:5–8, 7:25–26). At this stage of the proceeding, Patent Owner does not address the meaning of “nucleic acid probe molecules.” Although the term is not presently contested, Petitioner’s definition is reasonable in light of the present record, and we provisionally adopt it for clarity.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,299,783 - PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution
The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,858,215 - PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Aug 2, 2023 · IPR2023-00491 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 8, 9, 14, or 15 were unpatentable over Liu, Tuvell, and Kester.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we determine that Petitioner does not make a sufficient showing that its proposed combination of Liu, Tuvell, and Kester meets the limitations of independent claim 1 that include a “central server.” We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Liu, Tuvell, and Kester.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“There are a number of difficulties with Petitioner’s position, which appears to be conceived with the aid of hindsight to reconstruct the claimed invention. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.”). First, Petitioner considers each of the mirrored servers in its conception of Liu also to correspond to the claim’s recited “threat servers.” Pet. 50. As Dr. Orso testifies, “Liu’s mirror servers are effectively identical to each other” and “even if Liu’s mirror servers could be interpreted as teaching the claimed threat servers . . . [,] there is no ‘central server’ in Liu’s peer-to-peer network of mirrored servers.” Ex. 2001 ¶ 70.” slip op. at 22
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“H. Discretion Under 35 U.S.C. § 314(a) As noted above, the ’721 patent is the subject of parallel proceedings in the form of the related litigation. Supra, § I.E. Patent Owner asks that we exercise our discretion to deny the Petition based on the state of the related litigation. Prelim. Resp. 4–21. Because we deny the Petition on the merits, we do not reach this issue.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent discipline, and at least two years’ worth of experience developing computer networking or network architecture, or a Master’s degree in a related field.” Pet. 9. Petitioner adds that, alternatively, a person of ordinary skill in the art “could have four or more years of work experience in computer networking and in the development of client-server systems.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Newman. Ex. 1003 ¶ 17. Patent Owner’s statement of the level of ordinary skill is generally similar, and supported with testimony by Dr. Orso, who characterizes the parties’ respective positions as having “minor variations.” Prelim. Resp. 27; Ex. 2001 ¶¶ 39–42. According to Patent Owner, a person of ordinary skill in the art “would have had a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have 2-3 years of practical work experience in the general fields of electrical engineering, computer science, networking communications, and/or device and network security.” Prelim. Resp. 27. Patent Owner adds that “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Id. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion not to institute inter partes review if we were to adopt Patent Owner’s proposal. See Prelim. Resp. 27 (Patent Owner stating that “[a]lthough Patent Owner’s [person of ordinary skill in the art] definition differs slightly from Petitioner’s, Patent Owner’s positions and arguments do not change based on which [person of ordinary skill in the art] definition the Board applies”); Ex. 2001 ¶ 42 (Dr. Orso testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions.”).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,413,721 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00358 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over Wise and Shaffer, with Burrows added for claims 3–15; the Board did not reach the Kovatch-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 4–5. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and neither Patent Owner nor Mr. Winters proposes any different articulation. See Ex. 1002 ¶ 74; Ex. 2063 ¶ 41 (Mr. Winters stating factors considered in defining a person of ordinary skill in the art, without stating the education or experience held by such a person). Because we find Petitioner’s proposal reasonable, uncontroverted, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express construction of any term. Pet. 5 (“Petitioner does not believe that any express constructions are necessary to resolve the invalidity issues presented in this petition”); PO Resp. 1 (“Patent Owner believes that claim construction is unnecessary and all terms of the Challenged Claims should be given their plain and ordinary meanings.”). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Ex. 1001, 19:64–20:5. For this “sequential access” limitation, Petitioner relies on Shaffer’s disclosure of sequentially accessing websites according to a list, until a user is satisfied with what has been returned or the list is exhausted. Pet. 55–56. Supported by Mr. Lipoff’s testimony, Petitioner reasons that a person of ordinary skill in the art would combine Shaffer’s sequential access technique with Wise’s system “because it would have been beneficial to maximize the likelihood of finding the desired information more quickly and efficiently use computing resources, by searching in the most likely sources first, and proceeding through Wise’s index list until the user is satisfied or the list is exhausted.” Id. at 56 (citing Ex. 1002 ¶ 243). Patent Owner does not specifically dispute Petitioner’s reasons for effecting the combination of teachings from Wise and Shaffer, which we find sufficiently articulated and supported; instead, Patent Owner contends that the combination does not meet the sequential access limitation. See PO Resp. 78 (“Assuming, arguendo, this is a combination a [person of ordinary skill in the art] would consider, this combination does not disclose this claim limitation.”). Patent Owner makes two points in this respect. First, Patent Owner reiterates its contention, addressed above, that “Mr. Lipoff expressly does not rely on the Wise search index (option 1) for his opinion of the Wise disclosure of a plurality of websites.” PO Resp. 78. For the reasons we discuss in the preceding subsection, we agree with Petitioner that Patent Owner’s argument relies on “a misinterpretation of out-of-context deposition testimony.” Reply 6. As Petitioner adds, Wise discloses that an “index may be stored as one or more documents preferably in a hierarchical order” and “[t]he user may use the navigation commands to traverse the index and invoke a link to a source document.” Id. at 8; Ex. 1007, 10:7–10. Second, Patent Owner takes the position that the claim language precludes user interaction or instructions during the process of the sequential search. See PO Resp. 80. But Patent Owner provides insufficient evidentiary support for that position, and we agree with Petitioner that Patent Owner’s interpretation invokes a negative limitation that is unsupported by the plain and ordinary meaning of the claim language. See Reply 8. “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). In this instance, both parties and both experts agree that the specification of the ’941 patent is silent with respect to user participation during sequential access. PO Resp. 81 (Patent Owner asserting that “[t]he ’941 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶” slip op. at 25
- Strike new argumentNew argument disregardedDecided for petitioner
“Based on these facts, we find insufficient reason to exclude user interaction from the plain and ordinary meaning of the sequential access limitation. We thus determine that Shaffer—which clearly involves user interaction, see Ex. 1011, 6:3–29—meets the limitation. We also determine that Petitioner articulates sufficient reason, supported by rational underpinning, to achieve the combination of teachings it proposes. We accordingly determine that Petitioner makes a sufficient showing for the sequential access limitation. 5 In its Sur-reply, Patent Owner asserts that “[a]s discussed in the [Patent Owner Response], the ’941 specification teaches against the notion of user interaction in the claim limitations involving sequentially accessing.” Sur-Reply 6 (citing PO Resp. 80–81). We disagree with this characterization of the Patent Owner Response, and treat this assertion as a new argument impermissibly raised for the first time in the Sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply”). Regardless, even if we considered this argument, we would find it unpersuasive. Based on our independent review of the specification of the ’941 patent, in agreement with both experts, and in agreement with other statements of both parties, we find the specification to be “silent” on user interaction. See also Tr. 48:25–49:23 (Patent Owner conceding at oral hearing that the specification “is silent” on this issue).” slip op. at 27
Patent outcomesUS 7,881,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,881,941
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.