- PTAB · Aug 6, 2024 · IPR2024-00505 · APJ Peter D Shapiro · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, 9–14, 16–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious over Gai.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, we agree that it indicates that this factor weighs in favor of discretionary denial because the trial date is scheduled to occur before the final written decision deadline. However, the trial date here is closer to the deadline for the final written decision, with only a two-month difference here rather than the six-month difference in Fintiv, which increases the possibility here that any unforeseen delay in the district court proceeding could cause the order of those two events to reverse. Fintiv at 9 (“If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.”). Therefore, we find this factor weighs only slightly in favor of denying institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“that Gai, the sole reference asserted in Ground 1, was presented to and considered by the Office during the prosecution of the ’986 patent. Prelim. Resp. 30–31. We agree. Gai appears on the face of the ’986 patent, is incorporated by reference into it, and was submitted in an IDS. See Ex. 1001, 3:15–41; Ex. 1002, 30 (IDS with Examiner acknowledgment). Petitioner acknowledges that the first part of Advanced Bionics is satisfied, so we proceed to the second part of the framework. Pet. 100.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“access switches on the second port.” Ex. 1001, claim 5. We find that Petitioner has not provided sufficient information for us to find a reasonable likelihood that Gai teaches or suggests dependent claims 5 and 17 at this time. Dependent claim 17 is similar to claim 5, but depends on claim 16 (which in turn depends on independent claim 13), adding “wherein the protocol processor is adapted to update the entries in the database to point to the second access port before receiving the communication traffic from the one or more access switches on the second port.” Id. at claim 17. These claims both require the switch implementing the method for rapid recovery, such as switch 124 in Petitioner’s example discussed above, to update its filtering database before receiving communication traffic from access switches, such as access switches 115 and 116 in Petitioner’s example. Pet. 58. That effectively means that switch 124 must update its database immediately upon transitioning to the new port either before or at the same time it transmits dummy messages to the access switches. So this differs from the analysis for claim 4 because allowing the corresponding entry in the filtering database to time out will not be sufficient to ensure that the entries will be updated before receiving communication traffic from one of the access switches. There is no express disclosure from the portions of Gai cited by Petitioner of immediately updating the database on the switch implementing the method. Pet. 57–58, 94; Ex. 1005, 2:30–41, 5:36–39, 5:54–56, 12:62– 65. Based on the current record, we are also not persuaded by Petitioner’s declarant’s explanation of why Gai allegedly teaches or suggests this limitation. In the section addressing dependent claim 5, Dr. Houh asserts that: are transmitted before any communication traffic is received by the switch. As I discuss in Section VIII.A.5.ii, the filtering database is updated before transmitting the dummy messages. Accordingly, a POSITA would have understood that the database entries would have been updated before receiving any communication traffic from the access switches. Ex. 1003 ¶ 139. However, Section VIII.A.5.ii of Dr. Houh’s declaration relates to dependent claim 4 which does not have any timing requirement, and the citations to Gai there do not describe that the switch first updates its filtering database before sending the dummy message.12 Id. ¶¶ 133–136. Therefore, the conclusory and unsupported assertions that Gai teaches or suggests this limitation, or renders it obvious to a POSITA, do not persuade us that Petitioner has shown a reasonable likelihood of prevailing on these claims, at least at this stage of the proceeding.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Id. Therefore, after a failure and switchover, edge switch 124 transmits dummy traffic to access switch 116 over the second link. Id. Based on the current record, we agree that this example is at least suggested by Gai’s teaching that “the method and apparatus manifests, in part, as a series of novel commands that may be entered at the devices. The devices, moreover, may be classified as either access switches or backbone switches.” Ex. 1005, 6:6–9. Switch 124 is a backbone switch because it interconnects at least access switches 114–116, and, according to Gai, the invention can be implemented on that switch by entering the corresponding commands on it. Id. The rest of the example, whereby ports are switched based on a failure and dummy traffic that is transmitted to the access switches updates their filtering databases, also follows Gai’s teaching. Pet. 39–46; Ex. 1005, 5:35– 6:12. Patent Owner responds to this argument by asserting that “Gai itself never describes backbone switch 124 in such a way,” disputing it could transmit dummy traffic to access switch 116 over the second link. Prelim. Resp. 10–11. Rather, according to Patent Owner, “Gai clearly explains that such an action is in response to a port failure in access switch 114, not in teaching to the preferred embodiment that describes the failure occurring at switch 114, which we do not find warranted in view of the general teaching from Gai discussed above saying the invention can also be implemented on backbone switches. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076 (Fed. Cir. 2015) (“A reference must be considered for everything it teaches.”).” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 6,917,986 - PTAB · Aug 6, 2024 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Kovvali and Kalman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“on May 8, 2024 (see 35 U.S.C. § 314(b)(1)), and none of the relevant deadlines for fact discovery or expert discovery, or the date of the scheduled Markman hearing, will have passed by that date. As described by Petitioner, fact and expert discovery do not close until next year, the parties have not yet exchanged preliminary claim constructions, and the Markman hearing is not scheduled until December 4, 2024, approximately four months after our deadline for this decision. See Pet. 83. We also find that Petitioner’s diligence in filing the Petition only about a month after receiving Patent Owner’s infringement contentions, and only four months after the filing of the original complaint, supports this factor weighing more strongly against exercising our discretion to deny the Petition. See id. at 82. Accordingly, in view of the parties’ respective arguments, we find that factor 3 weighs strongly against discretionary denial. 4. Overlapping Issues with the Parallel Proceeding Under this factor, Petitioner stipulates that “[i]f the Board institutes trial, Petitioner will cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims, to the extent Petitioner even asserts the same combination in the district court.” Pet. 83. We find that this stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board, as well as concerns for potentially conflicting decisions.” Sand at 12. More specifically, if we institute, then by stipulation the court in the Cisco litigation will not have to determine whether the challenged claims of the ’279 patent would have been obvious in view of Kovvali, Kalman, Masters, and RFC 2892, and therefore the risk of inconsistent results is also reduced. against discretionary denial because the stipulation is limited in nature.10 Prelim. Resp. 20. We agree, and therefore find this factor weighs slightly against discretionary denial. Sand at 12 n.5 (“Petitioner stipulates only that it will not pursue, in district court, the ‘same grounds’ presented in the Petition in this case. . . . Petitioner could have stipulated that it would not pursue any grounds raised or that could have reasonable been raised in an IPR . . . . Doing so might have tipped this factor more conclusively in its favor.”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision below, Petitioner relies on Kovvali alone as teaching all but two steps recited in independent claim 1, and Petitioner similarly relies on Kovvali alone as teaching all but two limitations of independent claim 15. See Pet. 26–50, 63–64. For those additional steps and limitations, Petitioner relies on combined teachings of Kovvali and Kalman. See id. at 42–47. As Petitioner points out and Patent Owner acknowledges, however, Kovvali was not previously presented to the Office during prosecution of the application for the ’279 patent. See id. at 80; Prelim. Resp. 26. Moreover, notwithstanding Patent Owner’s assertion that Drake has “similar[ities] to how Petitioner characterizes Kovvali,” Patent Owner identifies only that “Drake teaches a ‘management system for local area networks’ that features an ‘allocator,’ which determined ‘if requested facilities are available, and if so, reserves these facilities for the requesting station.’” Prelim. Resp. 26 (citing Ex. 2003, code (57)). In contrast, Petitioner’s reliance on Kovvali goes significantly beyond such high-level generalizations, providing a detailed mapping of Kovvali’s teachings to, for limitations [15.1]–[15.5] and [15.8] of independent claim 15, as well as to the additional limitations recited in each of dependent claims 2, 5, 11–14, and 18, with supporting testimony from Dr. Mir’s declaration. Pet. 27–42, 48–51, 55–56, 59–64, 67 (citing Ex. 1003 ¶¶ 62–103, 120–130, 146–150, 160–185). Notably, Patent Owner does not expressly contest Petitioner’s arguments with respect to those limitations at this stage of the proceeding. See generally Prelim. Resp. Nor does Patent Owner cite any evidence of arguments substantially the same as those presented by Petitioner having been presented during prosecution. Accordingly, on this record and after taking into account Becton, Dickinson factors (a), (b), and (d), cited by Advanced Bionics as relevant to the first part of the two-part framework set forth therein (see Advanced Bionics at 9–10), we are not persuaded that the same or substantially the same art previously was presented to the Office or that the same or substantially the same arguments previously were presented to the Office. Accordingly, we need not proceed to the second part of the framework, and we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], 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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of the Preliminary Response. Prelim. Resp. 3. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,035,279
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.