- PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121 - PTAB · Aug 29, 2014 · IPR2013-00178 · APJ Jon B Tornquist · IPR · Final written decision
The Board canceled claims 1–20 and denied substitution of claims 21–30 because the proposed claims lacked written-description support and were not shown patentable over prior art.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“2. Written Description Support Patent Owner bears the burden to show written description support in the original disclosure for each proposed substitute claim. 37 C.F.R. § 42.121(b)(1); 37 C.F.R. § 42.20(c). The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).” slip op. at 8
- Skill levelSkill level board ownDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Sughrue testifies that one of ordinary skill in the art would have understood that the “different reactor configurations and catalysts” used in Jakkula “could and would lead to differing optimal temperatures from those reported in Craig.” Ex. 1040 ¶ 36 (emphasis added). For example, Dr. Sughrue testifies that one of ordinary skill in the art would have understood that reduced temperatures, as well as dilution—which was used in Jakkula but was not studied as an operating variable in Craig—could “greatly reduce the rate of dimerization and oligomerization of free fatty acids” and would lead to lower levels of high molecular weight hydrocarbons. Ex. 1040 ¶¶ 42, 60, 90; Ex. 1013, 4:11–13. Dr. Sughrue also provides evidence that in the years after the publication of Craig “the activity of hydroprocessing catalysts increased dramatically,” permitting lower reaction temperatures in the HDO step. Id. ¶¶ 31, 33. In light of these differences, Dr. Sughrue concludes that one of ordinary skill in the art “would not have been dissuaded from considering HDO reaction temperatures at or near the low end of the preferred temperature range taught in [Jakkula], e.g., 300 °C, or even lower temperatures within the more broadly taught range of 200-500 °C.” Ex. 1040 ¶ 37. We find Dr. Sughrue’s testimony persuasive. In particular, in light of Jakkula’s disclosed successful results, we are persuaded that one of ordinary skill in the art would not have viewed Craig’s 350 °C minimum temperature for “trouble-free operation” as a line not to be crossed, but would have understood that the optimal and minimum temperatures for the HDO step would vary depending on the particular reactor configuration and operating conditions used. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“Discovery of an optimum value of a results effective variable in a known process is ordinarily within the skill in the art.”). Although Dr. Klein presents an opposing view from that of Dr. Sughrue, upon review of both expert declarations and their corresponding depositions, on balance, we find that Dr. Sughrue’s testimony more persuasively considers not only the express teachings of Craig and Jakkula, but also the timing of the two disclosures, the differences in reactor configuration and operating conditions, and the knowledge, skill, and reasoning ability of one of ordinary skill in the art. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan.”)” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill in the art, upon reading a reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[I]n weighing the suggestive power of each reference, [the Board] must consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). When two references do not use directly comparable techniques or operating conditions, the impact of an allegedly discrediting reference may be significantly reduced. See id. at 592. slip op. at 14
§ 103 obviousnessPatents in suitUS 8,212,094
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.