• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing denied
  PTAB · Aug 22, 2018 · IPR2018-00392 · APJ Stephen C Siu · IPR · Rehearing

  The Board denied rehearing of its denial of institution on the obviousness ground over Slemmer and Vu, finding no abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • BurdenDecided for patent owner

    “35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 8. These arguments were previously addressed. Decision 6–7. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4

  § 103 obviousness
  Patents in suitUS 8,725,899
• Guest-Tek Interactive Entertainment Ltd. v. Nomadix, Inc.Rehearing denied
  PTAB · Aug 22, 2018 · IPR2018-00376 · APJ Stephen C Siu · IPR · Rehearing

  The Board denied rehearing and upheld denial of institution on the Slemmer and Vu obviousness ground because the petition did not show a reasonable likelihood of prevailing.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on a petition, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co.,, 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. 35 U.S.C. § 314(a). Notably, we must base our determination of a “reasonable likelihood” that Petitioner would “prevail” on “the information presented in the petition,” specifically. In the present case, Petitioner has not provided a basis, legal or otherwise, in support of its position that we must determine a “reasonable likelihood” based on information presented in some other petition, much less based on some other evidence of record in another proceeding. For example, in IPR2016-00077, the panel based its decision on a “Declaration by Mr. Keith Olsen.” That evidence is not of record in this proceeding.” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “supporting Petitioner’s position that it would have been obvious to one of ordinary skill in the art to have combined the cited references. Req. Reh’g. 8–10. In particular, Petitioner reiterates previous arguments presented in the Petition such as “Vu is one of the first prior art references to teach the handshake” but that “other prior art references also teach it.” Req. Reh’g 9. These arguments were previously addressed. Decision 7–8. Although Petitioner may disagree with our resolution of the arguments that Petitioner presented in its Petition, such arguments were considered fully in our Decision.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “construction for the term ‘TCP connection hand shake completion data,’ which resulted in an incorrect determination.” Req. Reh’g. 5. In particular, Petitioner now proposes a broadest reasonable construction of the term “TCP connection hand shake completion data” to mean “two devices initiating a communication session by the first device sending information to a second device, and the second device then responding to the first device.” Req. Reh’g. 7. Based on this newly proposed construction of the term “TCP connection hand shake completion data,” Petitioner argues that Vu discloses this feature. Req. Reh’g. 6–8. Under 37 C.F.R. § 42.71(d), Petitioner must “identify all matters [Petitioner] believes the Board misapprehended or overlooked.” Petitioner did not present this proposed construction in the Petition. See generally Req. Reh’g.; see generally Pet. We could not have “misapprehended or overlooked” what was not presented.” slip op. at 4

  Claim construction§ 103 obviousness
  Patents in suitUS 8,266,266
• Apple Inc. v. Andrea Electronics Corp.Some claims unpatentable
  PTAB · Jul 12, 2018 · IPR2017-00627 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–5, 10–16, 21–23, 25, and 38–46 are unpatentable; claims 6–9, 17–20, 24, and 47 were not shown unpatentable.

  RulingsFinal written decision

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

    “Although the dictionary defines “periodically” as “from time to time” or “at regular intervals of time,” based on the record before us, we agree with Patent Owner that its proposed construction is how one skilled in the art would have understood that term in the context of the ’345 patent Specification. Turning first to the intrinsic evidence, the Specification explains that “[t]he future and current minimum values are calculated continuously and initiated periodically, for example, every 5 seconds.” Ex. 1001, 8:37–39. Although the Specification later notes that “[i]t will be appreciated that, while specific values are used as in the several equations and calculations employed in the present invention, these values may be different than those shown” (id. at 8:64–67), this passage does not mean that the Specification contemplates arrangements where “periodically” is simply “from time to time.” Rather, we determine that statement from the Specification indicates that the specific amount of time (i.e., every 5 seconds) may vary. Turning now to the extrinsic evidence, the testimony of Dr. Douglas supports our conclusion, explaining that “at regular intervals of time” is the “only . . . definition . . . consistent with the understanding of a person skilled in the art in light of the specification of the ’345 Patent and its use in the particular field of audio signal processing” because [l]ike the “period” of an audio signal itself, which is the amount of time it takes for a signal to repeat itself, “periodically” as recited in claims 6 and 9 and throughout the remainder of the specification of the ’345 Patent refers to actions that occur at regular intervals (e.g., every 5 seconds rather than merely “from time to time”). Ex. 2002 ¶ 48. Moreover, Petitioner’s declarant, Dr. Hochwald testifies that outside of the context of the ’345 patent Specification, “periodically” means “at regular time intervals” (Ex. 2005, 99:13–15), and when asked about that term’s meaning in the context of the ’345 patent Specification, Dr. Hochwald simply noted that “all I can do is read what it says,” which is that “[i]t’s doing something periodically, for example, every five seconds” (id. at 100:4–6). Accordingly, the testimony from Dr. Douglas, as well as that from Dr. Hochwald, supports Patent Owner’s construction. In summary, we adopt Patent Owner’s construction of “periodically,” requiring “at regular intervals of time,” because (1) this is consistent with how this term is used in the context of the ’345 Patent Specification; and (2) this is supported by the testimony of both experts.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner responds that, because Helf uses average values (i.e., the average of eight consecutive values), it does not disclose using a minimum value. PO Resp. 17–23. Patent Owner acknowledges that the ’345 patent, itself, uses a “smoothing process [that] produces frequency bins with multiple smoothed magnitude values, ultimately finding the minimum of all of the values,” but contends that “Helf’s averaging process produces a single output representing one average of the original samples.” Id. at 20–21 (underlining omitted) (citing Ex. 1001, 8:14–28; Ex. 2002 ¶¶ 52, 63–72). We disagree with Patent Owner’s characterization of the differences between Helf and the ’345 patent. While Helf may ultimately produce a single minimum value, as discussed above, that value is based on a minimum value of the averages calculated over the given time period. At oral hearing, Patent Owner acknowledged that Helf determines many averages values (i.e., the averages of the eight consecutive frames) and determines a minimum of those values. See, e.g., Tr. 22:2–6. The claim simply requires a “future minimum value,” and does not preclude that value from being a minimum value taken from a set of average values. Indeed, such an interpretation of the claim would be inconsistent with the ’345 patent’s use of smoothed values noted by Patent Owner. Ex. 1001, 8:14–28. The testimony of Dr. Douglas cited by Patent Owner does not convince us otherwise. See Ex. 2002 ¶¶ 52, 63–72 (effectively repeating Patent Owner’s contentions, which are unpersuasive for the reasons set forth above). Accordingly, we are persuaded that Helf’s minimum value (Mk) corresponds to the “future minimum value” recited in claims 4 and 39.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “With respect to its “running minimum estimator,” Helf explains that the “running minimum estimator” is used “when either the speech signal is never absent for more than a second or the background noise itself is never constant in spectral shape.” Ex. 1010, 8:11–15. Helf acknowledges that its “running minimum estimator” is “much less accura[te]” than its “stationary estimator,” which is typically used for background noise estimates. Id. at 8:15–17. As a result, Helf only uses its “running minimum estimator” if “[i]t has been more than 10 seconds since the last update of the background noise spectral estimate due to the Stationary Estimator,” and “[t]he difference, D, between the past background noise estimate, which may have resulted from the Stationary Estimator or the Running Minimum Estimator, and the current Running Minimum Estimator is great.” Id. at 8:32–42. We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We see no persuasive reason to set Helf’s current background noise estimate (Nk and Ck, considered the “current minimum” by Petitioner) to the minimum estimate (Mk) from the “running minimum estimator” (considered the “future minimum” by Petitioner). The testimony of Dr. Douglas supports this conclusion. See, e.g., Ex. 2002 ¶¶ 119, 120. Addressing the portions of Helf noted above, Dr. Douglas testifies that “Helf only relies on Mk in a ‘worst case’ scenario” and “disfavors the use of Mk, even where Bk is unavailable,” and concludes that “one of ordinary skill would not be motivated to force the use of the disfavored Mk every ten seconds even where the much more accurate Bk estimate is available.” Id. ¶ 119. Dr. Douglas further testifies that “one of ordinary skill would not have been motivated to abandon[] the comparison of D to a threshold” because “one of ordinary skill in the art would recognize that Helf is a signal-dependent system, and it would not abandon its ability to adapt to varying signal conditions in favor of a blind periodic update using a disfavored estimate.” Id. ¶ 120. We credit the testimony of Dr. Douglas over that of Dr. Hochwald in this regard. See Ex. 1004 ¶¶ 157–159; Ex. 2002 ¶¶ 115–120. The testimony from Dr. Douglas is consistent with the disclosure of Helf, while that of Dr. Hochwald is based on conclusory statements. For example, the only portions of Dr. Hochwald’s testimony cited in the Petition in connection with the rationale provided in this challenge are conclusory statements that “[a] person of ordinary skill would have found it obvious to modify Helf to update the background noise estimate after every 10 second period based on the teachings of Martin,” and “[t]he skilled person would have recognized it was beneficial to periodically update the minimum noise value to ensure it accurately reflected the current noise level,” which are contrary to the disclosure of Helf noted above. Ex. 1004 ¶¶ 158, 159.” slip op. at 21

  Patent outcomesUS 6,363,345 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,363,345
• Apple Inc. v. Andrea Electronics Corp.Some claims unpatentable
  PTAB · Jul 12, 2018 · IPR2017-00626 · APJ Jeremy M Plenzler · IPR · Final written decision

  Claims 1–3, 12–25, 38, and 47 are unpatentable; claims 4–11 and 39–46 are not shown unpatentable, chiefly because the proposed Hirsch–Martin combination was not supported.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “In its Reply, Petitioner contends that, “[i]n this configuration [where W = 1], any purported distinction between windows and sub-windows in Martin vanishes and [Patent Owner]’s argument is irrelevant,” acknowledging that the proposed modification eliminates Martin’s sub-windows. Pet. Reply 5. Petitioner further contends that Patent Owner “incorrectly argues that the use of sub-windows is central to Martin’s algorithm” and “[n]othing in Martin suggests that the use of sub-windows is required.” Id. at 7 (citing Ex. 1023 ¶¶ 6–8). We disagree with Petitioner, and credit the testimony of Dr. Douglas over that of Dr. Hochwald with respect to Martin’s use of sub-windows because, as discussed below, Dr. Hochwald’s testimony is not consistent with the disclosure of Martin, while the testimony of Dr. Douglas is consistent with that disclosure. See, e.g., Ex. 1023 ¶¶ 6–9 (asserting that Martin does not expressly require sub-windows); Ex. 2002 ¶¶ 94–96 (discussing Martin’s use of at least two sub-windows for monotonic determination). As noted above, Martin’s algorithm requires a determination of whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Ex. 1006, 1094. We are not persuaded by Petitioner’s argument that one skilled in the art would have found it obvious to modify Hirsch’s system based on a scenario from Martin where W = 1 because such a scenario is counter to the entire purpose of Martin. Even Petitioner’s Declarant, Dr. Hochwald, acknowledges that a single data point (i.e., W = 1) cannot be used to determine whether something is monotonically increasing. See Ex. 2005 69:10–17 (explaining that you need at least two data points to make such a determination, meaning W ≥ 2). Petitioner fails to provide persuasive reasoning as to why one skilled in the art would have modified Hirsch’s teachings in a manner that is contrary to the express disclosure of Martin.” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner attempts to cure these deficiencies in its Reply, contending that, “[e]ven where Martin’s algorithm is configured to use multiple sub-windows, it still teaches the claimed ‘future minimum.’” Pet. Reply 8. We do not consider this new argument, as it is a new theory of unpatentability presented for the first time in the Petitioner’s Reply. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed Cir. 2016) (“A patent owner . . . is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of [unpatentability].”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)). For at least these reasons, Petitioner has failed to establish by a preponderance of the evidence that claims 4–11, 39–42, and 46 are unpatentable over the combined teachings of Hirsch and Martin.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Hirsch is directed to “techniques . . . to estimate the noise spectra or the noise characteristics for noisy speech signals” that “can be combined with a nonlinear spectral subtraction scheme.” Ex. 1005, 153. Hirsch discusses use of “FFT based spectral analysis” (id. at 154), for example, which Petitioner cites as corresponding to the “generating the frequency spectrum of said audio signal thereby generating frequency bins of said audio signal” recited in claim 1 (Pet. 27). Hirsch discusses use of an “adaptive threshold” for each frequency bin to distinguish between speech and noise (Ex. 1005, 153), which Petitioner cites as corresponding to the “setting a threshold for each frequency bin using a noise estimation process” recited in claim 1 (Pet. 27). Hirsch describes comparing spectral components to their corresponding thresholds to determine if speech is present (Ex. 1005, 153), which Petitioner cites as corresponding to the “detecting for each frequency bin whether the magnitude of the frequency bin is less than the corresponding threshold, thereby detecting the position of noise elements for each frequency bin” recited in claim 1 (Pet. 27–28). Based on the record before us, we are persuaded that Hirsch discloses each and every element of claim 1. We also are persuaded that Hirsch discloses each and every element of claim 38 for the reasons discussed above in connection with claim 1, as well as the “subtracting said noise elements . . . from said audio signal” additionally recited in claim 38. With respect to the recited “subtracting,” Petitioner cites Hirsch’s discussion of spectral subtraction. Pet. 25–26 (citing Ex. 1005, 153–155). As Petitioner notes, “[t]he spectral subtraction technique shown in Hirsch subtracts the noise estimate from each sub-band or ‘bin’ and sets any negative values to zero” (id. (citing Ex. 1005, 153)), which “is the same technique used in the ’345 patent” (id. (citing Ex. 1001, 6:58–61, 7:16–27)). Claims 2, 3, 12, 13, 21, and 23 depend from claim 1, and Petitioner cites to relevant portions of Hirsch as disclosing the additional limitations of those claims. See Pet. 28–31. We are persuaded by Petitioner’s unrebutted arguments and evidence related to how Hirsch properly accounts for each and every element of these dependent claims, which we adopt for purposes of this decision. Specifically, we find that Hirsch discloses the additional limitations recited in those claims based on the citations to Hirsch therein and the supporting expert testimony. See id. Based on our review of the record before us, the preponderance of the evidence supports Petitioner’s contentions that claims 1–3, 12, 13, 21, 23, and 38 are anticipated by Hirsch.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed

    “Initially, we agree with Petitioner that one skilled in the art would have considered Martin’s teachings, generally, when reviewing the teachings of Hirsch, as Martin is specifically referenced in Hirsch itself. Nevertheless, we are not persuaded that one skilled in the art would have modified Hisch’s system based on the teachings of Martin in the particular manner proposed by Petitioner. Consistent with Patent Owner’s contentions noted above, Martin describes determining “[t]he noise power estimate is based on the minimum of signal power within a window of L samples” and “[f]or reasons of computational complexity and delay the data window of length L is decomposed into W windows of length M such that M * W = L,” and provides an example where W=4. Ex. 1006, 1094. Martin distinguishes between “slowly varying noise power” and “rapidly varying noise power” to determine its noise power estimate, with a determination of whether the minimum power in successive sub-windows is monotonically increasing central to its estimation. Id. “If the minimum power of the last W windows with M samples each is monotonically increasing we decide on rapid noise power variation” and “the noise power estimate equals the power minimum of the last M samples Pn(i) = PMmin(i = r * M).” Id. “In case of non monotonic power the noise power estimate is set to the minimum of the length L window.” Id. Regardless of whether the noise power calculation is that for “slowly varying noise power” or “rapidly varying noise power,” Martin requires that first a determination is made as to whether or not “the minimum power of the last W windows with M samples each is monotonically increasing.” Id. (emphasis added). To the extent there can be any dispute on this issue, the testimony from Dr. Douglas supports the understanding that at least two subwindows are required to determine which noise power calculation to use. See Ex. 2002 ¶¶ 95, 96. In its Reply, Petitioner contends that, “[i]n this configuration [where” slip op. at 13

  Patent outcomesUS 6,363,345 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,363,345
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00692 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–14 as anticipated by Best and obvious over Best, and claim 15 as obvious over Best, Mills, and Bonella.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “construction “requires two layers of IC packages, in which a first IC package (the Board’s ‘carrier’) contains one or more second IC packages (the Board’s memory chips).” PO Resp. 39. Petitioner counters that “[t]he Board’s construction does no such thing.” Pet. Reply 18–19. We agree with Petitioner. Patent Owner’s argument is predicated upon the erroneous assertion that “[e]ach memory chip in the Board’s ‘carrier’ requires a different IC package (i.e., a second IC package) that encloses at least one memory die.” PO Resp. 39. Each memory chip does not require its own integrated circuit package. On the contrary, it may be, as Best discloses, a die enclosed with another die in a single IC package. Having considered the arguments and evidence, we maintain our construction of “memory module” to mean “a carrier that contains one or more memory chips,” where “carrier” encompasses an integrated circuit package.” slip op. at 14

  • Skill levelSkill level board ownOther

    “Otherwise, we determine that no express finding on a specific corresponding level of technical education and experience is necessary. Here, the level of ordinary skill in the art is 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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have reviewed the arguments provided by Patent Owner and determine such arguments are insufficient to have Mr. Maltiel’s declaration excluded in its entirety. Rather, it is within our discretion to assign the appropriate weight to be accorded evidence. See 37 C.F.R. § 42.65(a); see also, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (holding the Board has discretion to give more weight to one item of evidence over another “unless no reasonable trier of fact could have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”); and Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”). Based on the record before us, we are not persuaded that we should give the entirety of Mr. Maltiel’s declaration no weight.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “8–14. Pet. 30–37, 44–49. Notwithstanding Patent Owner’s arguments, which we have considered and which we address below, we are persuaded by Petitioner’s showing, which we adopt as our own findings and conclusions, that claims 1–14 are unpatentable under 35 U.S.C. § 102 as anticipated by Best.” slip op. at 24

  Patent outcomesUS 8,874,831 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,874,831
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.Rehearing denied
  PTAB · Oct 30, 2017 · IPR2017-00730 · APJ Matthew R Clements · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving in place the denial of institution on claims 1–5, 12–14, and 19–20 over Saito and Swain, and claims 3 and 13–14 over Saito, Swain, and Kim.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “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 addressed previously in a motion, an opposition, or a reply. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated 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. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold” slip op. at 2

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

    “Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 4

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We disagree. Neither paragraph teaches that the re-timing from CL=5 to CL=6 is “based on signals received by the each respective buffer circuit during a memory” read or write “operation,” as required by the claims. Paragraph 101 of Saito is reproduced below. Although the data DQ-Pre and the data DQ-Post have the same content, because the data DQ is buffered by the data register buffer 300, the timing is off between the data DQ-Pre and the data DQ-Post. The same is true for a relationship between the data strobe signal DQS-Pre and the data strobe signal DQS-Post. Therefore, in the present embodiment, it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner. Details on the timing adjustments will be described later. Ex. 1005 ¶ 101. Paragraph 101 describes Figure 7. See id. ¶¶ 100, 101. Recognizing that the timing of signals DQ-Pre (between memory controller and data buffer 300 on connectors 120) and the timing of signals DQ-Post (between data buffer 300 and memory chips 200 on data lines L1 or L2) is “off” because “data DQ is buffered by the data register buffer 300,” Saito teaches that “it is required to perform a timing adjustment between the memory chips 200 and the data register buffer 300 and a timing adjustment between the data register buffer 300 and the memory controller in a separate manner.” Ex. 1005 ¶ 101. This paragraph, therefore, does not teach that retiming from CL=5 to CL=6 is based on “time intervals from the leveling operations,” as Petitioner contends. Req. Reh’g 7. To the contrary, it explicitly teaches the necessity of a “separate manner” for adjusting timing between a data buffer and memory chip (i.e., for “signals received by the each respective buffer circuit during a memory write operation,” as recited in claim 1) and adjusting timing between a data buffer and a memory controller (i.e., for “transmission of a respective set of read data signals received from the respective group of memory devices,” as recited in claim 1).” slip op. at 3

  • Strike new argumentNew argument disregardedDenied

    “These arguments were not in the Petition so we could not have misapprehended or overlooked them. To the extent that Petitioner is arguing that these paragraphs of our Decision indicate a misapprehension of what was argued in the Petition, we disagree. Specifically, we are unpersuaded by Petitioner’s contention that Saito’s teaching to use time A to time reception of read data by “input buffer circuit INB and the like” (Ex. 1005 ¶ 149) teaches using that same interval “to time transmission” of read data, as claimed, merely because data is received by that input buffer circuit before, at some later point, being transmitted to the memory controller. Req. Reh’g. 8–9. We also are not persuaded that Saito’s use of “and the like” extends to the timing of the output of read data from buffer 300 in the manner argued. Req. Reh’g 9–11. This argument is particularly unpersuasive because, as our Decision points out (Dec. 13–14), Saito discloses an alternative to timing the output of read data from data buffer 300, which is a read leveling operation by the memory controller. Thus, although “Petitioner does not rely on those data buffer-memory controller operations for any of its arguments” (Req. Reh’g 13), they are nevertheless relevant because they corroborate that Saito does not teach its data buffer 300 using a time interval “based on signals received by [it]” for the purpose of “tim[ing] transmission of a respective set of read data signals.”” slip op. at 5

  § 103 obviousness
  Patents in suitUS 9,128,632
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Jun 22, 2017 · IPR2016-00331 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–11, 14–25, and 28–30 are unpatentable as obvious over Beser and RFC 2401.

  RulingsFinal written decision

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

    “Patent Owner’s contentions are not persuasive. Patent Owner fails to explain sufficiently why the notion of “performing an additional evaluation” constitutes an implicit part of the claimed intercept clause. Addressing similar arguments by Patent Owner, a Board panel made a similar determination in the ’237 FWD relied upon by Petitioner. ’237 FWD 11 (“the record show[s] that the additional functionality urged by Patent Owner should not be imported into the intercepting phrase”).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “broadest reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Under this standard, absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, only the claim terms or clauses below need express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms in controversy need to be construed and only to the extent necessary to resolve the controversy).” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We find Dr. Tamassia’s testimony as to public accessibility of RFCs in general to be credible, especially given the independent support of RFC 2026 (Ex. 1036), the contents of which Patent Owner does not challenge.7 As part of routine discovery, see 37 C.F.R. § 42.51(b)(1)(ii), Patent Owner had the opportunity to cross-examine Dr. Tamassia, but does not point us to any discussion of this issue. Moreover, RFC 2401’s contents are consistent with the publication process described by RFC 2026 and Dr. Tamassia, including the inclusion of a date “November 1998” on the top right corner of the first page of the document. Ex. 1008, 1. In addition, this document—a request for suggestions and improvements for an Internet standards protocol, 7 As addressed below, Patent Owner objects and moves to dismiss a number of Exhibits based on hearsay and relevancy. See Paper 20 (Motion to Exclude). having no indication of being a mere draft or internal paper—is precisely the type of document whose very purpose is public disclosure, including on the Internet. Both of the magazine articles, Exhibits 1064 and 1065, further corroborate the indicia of availability on the face of RFC 2401, although they are not necessary to our finding of public accessibility. We do not rely on the testimony of Sandy Ginoza, Exhibits 1060 and 1063, which Patent Owner seeks to exclude as discussed further below.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner does not articulate a persuasive reason for giving Dr. Tamassia’s declaration, as a whole, little or no weight in our analysis. We agree with Petitioner that experts are not required to opine on every relevant factual and legal issue in order to be accorded substantial weight. The cases upon which Patent Owner relies do not show otherwise. For example, Patent Owner cites Schumer v. Laboratory Computer Systems, Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002), for the proposition that “[expert] testimony . . . ‘must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.’” PO Resp. 52–53. Patent Owner’s quotation, however, mischaracterizes Schumer by omitting introductory words necessary to the meaning of the quoted sentence. In its entirety, the quoted portion of Schumer states the following: Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses’ interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient if it is merely conclusory. Schumer, 308 F.3d at 1315–16. The Federal Circuit then adds that it is not the task of the courts to “attempt to interpret confusing or general testimony to determine whether a case of invalidity has been made out” and “if the testimony relates to prior invention and is from an interested party, as here, it must be corroborated.” Id. at 1316. So, instead of laying out a specific, required format for the content of all testimony regarding invalidity, as asserted by Patent Owner, this portion of Schumer confirms the unremarkable proposition that conclusory, overly general, confusing, and self-interested testimony should not be relied upon. Id.; see also Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1152 (Fed. Cir. 2004) (“General and conclusory testimony, such as that provided by Dr. Kazmer in this case, does not suffice as substantial evidence of invalidity.”). Patent Owner does not show that the whole of Dr. Tamassia’s testimony suffers from any of these failings. Under 35 U.S.C. § 316(e), the preponderance of the evidence standard governs in determining whether Petitioner establishes unpatentability. We exercise discretion to determine the appropriate weight to accord the evidence presented, including expert opinions, based on the underlying facts supporting the opinion. We accord relevant portions of Dr. Tamassia’s testimony the appropriate weight based on that particular testimony and supporting evidence.” slip op. at 14

  Patent outcomesUS 8,504,696 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,504,696
• The Mangrove Partners Master Fund, Ltd. / Apple Inc. et al. v. Virnetx Inc.All claims unpatentable
  PTAB · Sep 9, 2016 · IPR2015-01047 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 2, 6–8, and 12–14 are unpatentable as anticipated by Kiuchi; the Board also addressed obviousness grounds but did not need to rely on the additional references.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Claim 1 recites a DNS request. The DNS request is “sent by a client,” potentially “corresponds to a secure server,” and may result in any one of a return of an IP address of a nonsecure computer or the initiation of an encrypted channel between the client and the secure server. Claim 1 does not appear to recite any other specific features of the DNS request.” slip op. at 6

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We are cautioned by the Federal Circuit that, with respect to secondary considerations alleged by Patent Owner in response to a prima facie showing of obviousness, “the obviousness inquiry centers on whether ‘the claimed invention as a whole’ would have been obvious.” WBIP, LLC v. Kohler Co., Appeal Nos. 2015-1038, 2015-1044, slip op. at 15 (Fed. Cir., July 19, 2016). Looking at the “claimed invention as a whole,” we note that claim 1, for example, recites a data processing device that determines whether an intercepted DNS request corresponds to a secure server, forwards the DNS request to a DNS function that returns an IP address of a nonsecure computer (when the intercepted DNS request does not correspond to a secure server), and automatically initiating an encrypted channel between the client and the secure server when the intercepted DNS request corresponds to a secure server. As previously discussed in the record, Kiuchi discloses these features, either taken separately or as a “whole.” Patent Owner does not indicate a portion of the “whole” of the claimed invention that Kiuchi supposedly does not disclose. Not having identified sufficiently a part of the “whole” of the claimed invention that Kiuchi does not disclose, we conclude that Kiuchi discloses the “whole” of the claimed invention. Therefore, Patent Owner fails to show a nexus to its evidence of secondary considerations. While Patent Owner argues that DARPA-sponsored entities were supposedly unable to provide “the ease of use of the solutions provided in the claimed inventions of the ’151 patent,” Patent Owner does not demonstrate persuasively and with credible evidence that Kiuchi, for example, was also unable to provide “the ease of use of the solutions provided in the claimed inventions of the ’151 patent.” As previously discussed, Kiuchi appears to have succeeded in providing such solutions.” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “preponderance of the evidence that RFC 1034 or [Rescorla] qualifies as a ‘printed publication.’” PO Resp. 40. The determination of whether a given reference qualifies as a prior art “printed publication” involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). On its face, RFC 1034 is a dated “Request for Comments” from the “Network Working Group,” discussing generally known methods for responding to a query from a client. Ex. 1005, 4. On its face, Rescorla is a dated “Internet-Draft” from the Internet Engineering Task Force (IETF) and described as a “draft document[] valid for . . . six months.” Ex. 1004, 1. Moreover, RFC 1034 explicitly states that “[d]istribution of this memo is unlimited.” Ex. 1005, 1. These indicia suggest that it is more likely than not that both documents were made available to the public (over the Internet). To bolster its showing, Petitioner provides evidence suggesting that RFC 1034 and Rescorla would have been accessible to the interested public. For example, Petitioner provides testimony of Dr. Roch Guerin who explains that “Request for Comment” documents or “RFCs’ or ‘Internet- Drafts’ are “publications [that] are prepared and distributed” and “can be obtained from a number of Internet hosts using . . . document-retrieval systems.” Ex. 1003, 46. Dr. Guerin also testifies that such documents are “published and widely distributed” for “a period for others to provide comments on the document” and that the “publication date of each RFC is contained in the RFC, . . . in the top right corner of the first page of the document [which is] the date it was released for public distribution on the Internet.” Ex. 1003, 44. Ex. 1003 47–48.” slip op. at 24

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDecided for petitioner

    “Patent Owner argues that “Petitioner Black Swamp was improperly joined to the 01047 proceeding” because “[e]xpert testimony was required in this case given the complexity of the technology at issue” and Black Swamp supposedly failed to file this allegedly “required” expert testimony. This argument was previously raised by Patent Owner and previously addressed. IPR2016-00167 Prelim. Resp. 7–10; IPR2016-00167 Dec. Inst. 4–5; Paper 38, 3–4; Paper 42, 2–3. We remain unpersuaded by Patent Owner’s re-iterated arguments for at least the reasons previously provided. In response to the question of whether Petitioner is required to rely on expert testimony for purposes of institution, Patent Owner now states that “the Federal Circuit” has held that “Petitioner has both the ‘initial burden of production’ and ‘the burden of persuasion to prove unpatentability by a preponderance of the evidence.” PO Resp. 40. Patent Owner, however, does not explain the relevance of this statement, even if assumed to be true, to whether or not a Petitioner is required to rely on expert testimony for purposes of institution. We remain unpersuaded by Patent Owner.” slip op. at 26

  Patent outcomesUS 7,490,151 unpatentable
  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,490,151
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

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

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

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

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableMixed

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00481 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 10, 12–15, 17, 26, 28–31, and 33 are unpatentable as anticipated by Provino; claims 4, 6, 20, 22, 35, and 37 are unpatentable as obvious over Provino and Guillen.

  RulingsFinal written decision

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

    “It does not recite “recogniz[ing] that the query message is requesting a secure computer address.” “[T]he claims themselves provide substantial guidance as to the meaning of particular claim terms” and “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Phillips, 415 F.3d at 1316 (citations omitted). Based on the context of the claim, the Specification, and the prosecution history, claim 1 does not require “recogniz[ing]” as argued by Patent Owner. As explained in the Background section supra, the Specification describes an “SDNS 3313” that “contains a cross-reference database of secure domain names and corresponding secure network addresses. That is, for each secure domain name, SDNS 3313 stores a computer network address corresponding to the secure domain name.” Ex. 1001, 52:4–8. This disclosure comes closest to aligning with the claim term by explaining how a “secure domain name service” (i.e., an SDNS as set forth in the disclosure) operates. Patent Owner does not point the panel to a disclosure in the Specification that clearly supports the requirement of an SDNS to “recognize that the query message is requesting a secure computer address.”” slip op. at 15

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

    “6. Access Request Message As Patent Owner explains, the construction of this term “do[es] not appear to be relevant to the parties’ disputes.” PO Resp. 23.” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “that under the claim construction of a “secure domain name” as “a name that corresponds to a secure computer network address,” “Patent Owner . . . concedes Provino discloses this limitation.” Pet. Reply 6–7 (citing Ex. 1003, 13:31–40, 10:45–67; Resp. 26; Ex. 2024 ¶ 28; Ex. 1011 ¶¶ 29–33; Inst. Dec. 8). Petitioner’s argument and showing is persuasive. The claim element does not require any verification that the name is secure.7 Patent Owner also argues that Provino does not teach “receiving a secure domain name” because Provino uses “standard” domain names. PO Resp. 29. Patent Owner points to its Specification that allegedly discusses “an exemplary ‘standard’ domain name ending in ‘.com’ and an exemplary ‘non-standard’ domain name ending in ‘scom.’” PO Resp. 28 (citing Ex. 1001, 51:16–17; Ex. 2024 ¶ 31). These exemplary embodiments do not alter the broadest reasonable claim construction of a “secure domain name.” See supra Section I.E.3., I.E.4. (Claim Construction). As also noted above (id.), Patent Owner made the opposite argument to a district court, and argued that a “non-standard” distinction “is not supported by the specification or the prosecution history.” Ex. 1018, 18.” slip op. at 28

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Petitioner responds to Patent Owner’s argument as follows: [I]n Provino, before this path between device 12(M) and server 31(s) can exist, nameserver 32 must provide server 31(s)’s secure address. . . . If, in the same response message, a modified nameserver 32 provides QoS parameters, that would necessarily be before the relevant path is established, contrary to Patent Owner’s assertions. Pet. Reply 14 (citing Ex. 1003, 10:56–11:45; Ex. 1011 ¶ 39; Ex. 1089, 58:17–59:16; Ex. 2019, 51:21–55:6). Similarly, according to the Petition, “a person of ordinary skill in the art would have modified the VPN name server 32 of Provino to store, in part, topology dependent QoS parameters, as described by Guillen,” and “[s]uch a modified VPN name server 32 would . . . respond to requests by device 12(m) to resolve the human-readable network addresses of servers 31(S) with both the integer Internet address of the servers 31(S) and the QoS parameters for the servers 31(S).” Pet. 38 (citing Ex. 1011 ¶ 43, Ex. 1005, 82, § 2.3). Petitioner adds that “one of skill would combine Guillen and Provino based on the parallel uses of DNS servers.” Pet. Reply 14 (quoting Ex. 1011 ¶ 42). At the cited paragraph, Dr. Guerin reasons that “Provino relies upon DNS servers to perform address resolution in the context of VPNs in the same manner as Guillen describes their use in the context of ATM communications.” Ex. 1011 ¶ 42 (citing Ex. 1003, 10:45–67). Dr. Guerin also relies on Guillen’s disclosure of using DNS directory servers for address resolution and storing values of QoS parameters to suggest providing indications of feasible QoS levels during address resolution. Ex. 1011 ¶ 41 (citing Ex. 1005, 82, § 2.3). Dr. Guerin also cites Guillen as teaching that QoS parameters relate to guarantees such as bandwidth, and other service requirements, required for multimedia applications, so that “the multimedia application can properly function.” Id. ¶ 40 (citing Ex. 1005, Abstract, 80–82, §§ 2.1, 2.3, 2.4). As outlined above, the parties agree that if the modification would have been obvious, it would apply during address resolution to set up Provino’s tunnel. The parties do not disagree materially, if at all, about what Guillen teaches. On balance, Guillen supports Petitioner’s rationale. See Ex. 1005, 80–82. However, according to Patent Owner, the proposed modification of Provino’s’ nameserver could not work, because “by the time Provino’s device 12(m) accesses nameserver 32, device 12(m) and firewall 30 have already cooperated to establish the tunnel.” PO Resp. 50. Patent Owner’s argument about “access[]” confounds the claim terms” slip op. at 43

  Patent outcomesUS 7,188,180 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180

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.