- PTAB · Dec 7, 2023 · IPR2023-01024 · APJ Justin T Arbes · IPR · Institution
Review instituted for claims 8–17 on all asserted grounds after finding a reasonable likelihood of prevailing on the Finnegan–Begault and Shivappa–Zhou grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (‘Sotera’)], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01024 challenging the patentability of claims 8–17 of the ’836 patent, then [Petitioner] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Reply 1 (quoting Ex. 1141, 3); see also Exs. 2015–2017 (Patent Owner’s infringement contentions indicating that Patent Owner is asserting only claims 8 and 10 of the ’836 patent in the district court case); Ex. 2018, 2 (Petitioner’s final invalidity contentions, dated October 18, 2023, indicating the same); Ex. 1143 (Order Granting Joint Motion to Amend Scheduling Order in the district court case indicating that the deadlines to serve final infringement contentions and to amend pleadings, including to “add[] . . . patent claims,” have expired). Patent Owner concedes that Petitioner filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Sur-Reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit [Petitioner’s] ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.”)). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 3. We disagree with Patent Owner, as Petitioner’s stipulation comports with the “could have reasonably been raised” language of the Director’s Memo. Compare Reply 1 (stipulation not to pursue in the district court case “any ground raised or that could have been reasonably raised in” this proceeding), with Director’s Memo 3 (“stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB”). Patent Owner’s argument essentially attacks the reasoning of Sotera itself and the Director’s Memo, which we are bound to follow. Accordingly, Patent Owner’s argument is unavailing.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Based on the arguments presented in the Petition, we conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’836 patent challenged in the Petition. Accordingly, we institute a trial on all claims and all grounds asserted in the Petition. The Board has not made a final determination under 35 U.S.C. § 318(a) with respect to the patentability of the challenged claims.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art would have had “a Bachelor’s degree in computer science/engineering, or a related field, with coursework in computer programming, digital signal processing, spatial audio, or virtual/augmented reality, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent,” where “[a]dditional education can compensate for less experience, and vice-versa.” Pet. 4 (citing Ex. 1003 ¶¶ 45–51). Patent Owner argues that a person of ordinary skill in the art instead would have had “several years of academic and/or professional experience in a technical field relevant to digital audio signal processing, such as electrical engineering, computer engineering, or computer science; and a familiarity with relevant literature and concepts concerning virtual 3D audio processing, which were widely available at the time of disclosure.” Prelim. Resp. 5–6. Neither party explains why its proposed definition is appropriate. Based on the record presented, including our review of the ’836 patent and the types of problems and solutions described in the ’836 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 5–18 (describing the general technology of “[t]hree-dimensional (3D) sound localization”), col. 2, l. 24–col. 3, l. 49 (describing the properties and prior uses of HRTFs), col. 5, ll. 14–57 (describing various electronic devices capable of displaying virtual reality (VR) and augmented reality (AR) images). We note, however, that our conclusions herein would be the same regardless of which party’s definition is used.2” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree based on the current record. Limitations 8[c] and 8[e] recite, respectively, that “the display displays the image to the user at the near-field distance” and “the electronic device is located at the near-field distance from the head of the user” (emphasis added). Both refer to the same distance, finding antecedent basis in the earlier recitation of “a near-field distance” in limitation 8[a]. Thus, based on the current record, the plain language of claim 8 appears to require that (1) the image is displayed to the user at a near-field distance from the user’s head, and (2) the electronic device is located at the same distance—in other words, they are co-located. Patent Owner discusses limitations 8[a] and 8[e], but fails to account sufficiently for the language of limitation 8[c]. See id. at 11–12.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,290,836 - PTAB · Dec 6, 2023 · IPR2023-01020 · APJ Scott Raevsky · IPR · Institution
Instituted review of claims 1–20 on all grounds; the Lyren and Reif combination showed a reasonable likelihood of obviousness for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’184 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that If the PTAB institutes the pending IPR in IPR2023-01020 challenging the patentability of claims 1-20 of the ’184 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 7. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’184 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The parties do not propose any claim constructions. See Pet. 7; Prelim. Resp. 7. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,448,184 - PTAB · Dec 6, 2023 · IPR2023-01019 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of success on at least one claim, including over Lyren and Reif assuming Lyren is prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’179 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022). Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[8] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that 7 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 8 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). If the PTAB institutes the pending IPR in IPR2023-01019 challenging the patentability of claims 1-20 of the ’179 patent, then [Defendants Meta Platforms, Inc., Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA). Prelim. Reply 1. Patent Owner concedes that Petitioner has filed a “Sotera-like stipulation” but argues that it is insufficient because it “leaves the door open to a duplication of efforts and the possibility of conflicting decisions.” Prelim. Sur-reply 1 (citing Ex. 1141, 4 (“This stipulation is not intended . . . to limit Meta’s ability to assert . . . invalidity under 35 U.S.C. §§ 102 and 103 not available in IPR and under 35 U.S.C. §§ 101 and 112[], regardless of whether IPRs are instituted.” (emphasis omitted))). Namely, Patent Owner argues that Petitioner’s stipulation carves out “the right to assert overlapping system art in the parallel district court proceeding,” such that institution here would not address the risk of “inconsistent outcomes between the PTAB and the district court.” Id. at 4. We disagree with Patent Owner, as Petitioner’s stipulation sufficiently” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A POSA [person of ordinary skill in the art or “POSITA”] in the relevant timeframe (2015 to 2019) would have had a Bachelor’s degree in computer science/engineering, music technology, or a related field, and at least two years of industry experience, or academic research experience, in virtual/augmented reality, audio engineering, or an equivalent. Additional education can compensate for less experience, and vice-versa. Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Patent Owner applies Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 4. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’179 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). The parties do not propose any claim constructions. See Pet. 6–7; Prelim. Resp. 4. We agree that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,368,179 - Trend Micro, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Dec 1, 2023 · IPR2023-00799 · APJ Neil T Powell · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been unpatentable as obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner that Petitioner has not addressed limitation 1[f] persuasively. Pet. 43–44; Prelim. Resp. 19–21. Even assuming Petitioner is correct that Miliefsky’s network-based assets list constitutes “temporal events,” as recited in claim 1, Petitioner does not persuasively address certain other aspects of the claim language. For example, Petitioner does not support sufficiently its contention that “Miliefsky teaches ‘generating . . . temporal events based at least in part on analyzing the third party network endpoint assessments.’” Pet. 44 (citing Ex. 1003 ¶¶ 198–201) (emphasis added). Petitioner cites Miliefsky’s paragraph 94, which does not expressly disclose generating the alleged temporal events (the network-based assets list) based at least in part on analyzing third party network endpoint assessments. Ex. 1006 ¶ 94; Pet. 44. According to Petitioner, however, Miliefsky discloses “configuration data collected or processed at particular time (‘temporal events’) can be combined with vulnerability assessment data and include related data, which . . . is disclosed as being sourced from third parties.” Pet. 44 (citing Ex. 1003 ¶ 201). Petitioner also argues that “internal assessments such as the generated network asset list are disclosed as being combined with external assessments to provide feedback to each other (e.g., to produce control lists).” Id. (citing Ex. 1003 ¶¶ 202–203; Ex. 1006 ¶ 94). Even if accurate, these arguments do not show sufficiently for institution that Miliefsky teaches generating temporal events based at least in arguments indicate that Miliefsky discloses combining the alleged temporal events (the network-based assets list) with third party network endpoint assessments. As Patent Owner observes, combining temporal events with endpoint assessments logically would not constitute generating the temporal events based on the endpoint assessments. Prelim. Resp. 20–21.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“patent “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10 (citing Ex. 1003 ¶ 83). Petitioner adds that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 10–11; Prelim. Resp. 11. Having considered the record, we agree with the parties that no explicit claim construction is Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. GROUND 1 – ALLEGED OBVIOUSNESS OVER MUKHERJEE AND MILIEFSKY” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner that Petitioner has not persuasively addressed limitation 1[g]’s requirement for “correlating . . . the received endpoint events and the generated temporal events.” Ex. 1001, 40:6–7; Pet. 45–47. Petitioner does not provide a sufficiently persuasive, objective basis for its contention that it would have been obvious to include Miliefsky’s network-based assets list “into the correlation operations of Mukherjee.” Pet. 46 (citing Ex. 1003 ¶ 216). Petitioner argues that Mukherjee suggests such a modification in the following passage: The fourth layer of the model introduces the event in context. There are two kinds of context: temporal and spatial. As an example of temporal context, behavior which is unremarkable during standard working hours may be suspicious during off-hours [35]. The IDM, therefore, allows for the application of information about wall-clock time to the events it is considering. Wall-clock time refers to information about the time of day, weekdays versus weekends and holidays, as well as periods when an increase in activity is expected. In addition to the consideration of external temporal context, the expert system uses time windows to correlate events occurring in temporal proximity. This notion of temporal proximity implements the heuristic that a call to the UNIX who command followed closely by a login or logout is more likely to be related to an intrusion than either of those events occurring alone. Such related patterns of behavior are also referred to as attack signatures [23,24]. Ex. 1005, 13 (emphases added consistent with emphases in Petition); Pet. 45–46. Petitioner does not sufficiently support its position that this passage of Mukherjee would have suggested adding a network-based assets list into certain information, but not an assets list. Ex. 1005, 13. And, as Patent Owner notes, the only “correlat[ing]” mentioned in the cited passage is “correlat[ing] events occurring in temporal proximity.” Id.; Prelim. Resp. 21–22. Petitioner does not provide a persuasive, objective basis for its view that these disclosures suggest including Miliefsky’s network-based assets list into the process of correlating temporally proximate events. Pet. 46. Petitioner does not, for example, persuasively show for institution how or why Mukherjee’s discussion of correlating temporally proximate events and/or its reference to attack signatures allegedly would have suggested correlating Miliefsky’s network-based assets list and endpoint events. Id. Nor does Dr. Nielson’s testimony substantiate Petitioner’s argument that the cited passage of Mukherjee suggests the proposed modification. Id. (citing Ex. 1003 ¶ 216). Indeed, Dr. Nielson does not testify that Mukherjee suggests including a network-based assets list in correlation operations. E.g., Ex. 1003 ¶ 216. Moreover, Petitioner and Dr. Nielson do not otherwise sufficiently support Petitioner’s position that it would have been obvious to correlate Miliefsky’s network-based assets list and Mukherjee’s events. Pet. 46; Ex. 1003 ¶¶ 209–220. Consistent with Patent Owner’s arguments, Petitioner and Dr. Nielson do not articulate or substantiate a sufficiently persuasive reason that a person of ordinary skill in the art would have had for modifying Mukherjee to correlate Miliefsky’s network-based assets list and Mukherjee’s temporally proximate events. E.g., Pet. 45–47; Ex. 1003 ¶¶ 209–220; Prelim. Resp. 21–22. Petitioner and Dr. Nielson do not, for example, explain how or why a person of ordinary skill in the art would have” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,092,616 - Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Nov 21, 2023 · IPR2023-00706 · APJ Neil T Powell · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been obvious over Das.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having considered the arguments and the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent “would have been a person with at least a bachelor’s degree in computer science, computer engineering, or electrical engineering or in a related field and at least three years of experience in computer network security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Both parties express that we do not need to construe any claim language explicitly. Pet. 6; Prelim. Resp. 13. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner does not show sufficiently that Das teaches or would have rendered obvious the claimed use of “network endpoint assessments.” Petitioner does not substantiate its conclusory argument that Das’s network threat information constitutes the claimed “network endpoint assessments.” Pet. 21. In support of this argument, Petitioner cites Dr. Jeffay’s testimony, but that testimony is entitled to little weight because it is verbatim to Petitioner’s conclusory argument. Compare Pet. 21 with Ex. 1003 ¶ 66; Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”). Neither Petitioner nor Dr. Jeffay provides persuasive reasoning or evidence that Das’s network threat information relates to endpoints. Pet. 21–22; Ex. 1003 ¶¶ 66–67. Moreover, even if we assume Das’s network threat information somehow relates to endpoints, Petitioner and Dr. Jeffay do not provide persuasive reasoning or evidence that the information constitutes endpoint assessments, specifically. Pet. 21–22; Ex. 1003 ¶¶ 66–67.” slip op. at 18
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,092,616 - Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution deniedPTAB · Nov 21, 2023 · IPR2023-00705 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Palo Alto Networks did not show a reasonable likelihood that claims 1–5 would have been obvious over Das and Overcash.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood of establishing that independent claim 1 would have been obvious over Das and Overcash. Petitioner’s arguments and evidence regarding dependent claims 2–5 do not cure the deficiencies in Petitioner’s challenge to claim 1. Pet. 22–44. Accordingly, Petitioner does not demonstrate a reasonable likelihood of establishing obviousness of any of the challenged claims. III. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’948 patent, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’948 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM INTERPRETATION B. We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 5–6; Prelim. Resp. 10. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not supported sufficiently its position that Das’s reputation engine 20 constitutes both “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. The portions of Das cited by Petitioner do not disclose that reputation engine 20 is a matrix. Ex. 1006 ¶¶ 18, 23–24, 48, 55, 58; Pet. 12–15. And Petitioner does not provide sufficiently persuasive, objective support for its contention that an engine constitutes a matrix. Pet. 14–15 (citing Ex. 1006 ¶ 55; Ex. 1003 ¶¶ 57–58). To the extent Petitioner implies that reputation engine 20 is a matrix because it correlates and otherwise processes information when generating and modifying reputation scores, Petitioner does not explain persuasively why performing 4 The Preliminary Response cites “Ex. 2002, 8-10,” but this appears to be a typographical error, as Exhibit 2003 is the parties’ district court Joint Claim Construction and Prehearing Statement. those actions would make an engine a matrix. Id. Indeed, in tension with Petitioner’s conclusory position that an engine is a matrix, the ’948 patent discloses using more than one “correlation matrix,” in addition to a “correlation engine,” suggesting that an engine is not a matrix. Ex. 1001, 15:14–19 (“event correlation matrix 633”), 15:38–41 (“risk correlation matrix 411”), 15:29–35 (“system event correlator 410 can be implemented as a correlation engine”). Moreover, even if Petitioner had persuasively supported its position that an engine is a matrix, Petitioner does not provide sufficiently persuasive, objective support for its contention that Das’s single reputation engine 20 constitutes two matrices. Id. For the foregoing reasons, Petitioner does not provide persuasive arguments and evidence that the cited prior art teaches or suggests “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. Nor does Petitioner provide persuasive arguments and evidence that this claim limitation otherwise would have been obvious over the cited prior art, as Petitioner does not argue, much less substantiate, that it would have been obvious to modify the prior art’s disclosures to use “an event correlation matrix” and “a risk correlation matrix.” See, e.g., Pet. 12–15.” slip op. at 16
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,990,948 - Palo Alto Networks, Inc. v. BT Americas Inc.Institution deniedPTAB · Nov 17, 2023 · IPR2023-00888 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution on all grounds because the petition did not show a reasonable likelihood that any of claims 1–42 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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; see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assocs. and citation omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally is not treated as limiting the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). Our reviewing court has explained, however, that a “conclusion that some preamble language is limiting does not imply that other preamble language, or the entire preamble, is limiting.” Cochlear Bone Anchored Sols. AB v. Oticon Med. AB, 958 F.3d 1348, 1355 (Fed. Cir. 2020); see TomTom, Inc. v. Adolph, 790 F.3d 1315, 1322-23 (Fed. Cir. 2015) (holding the court erred in determining that it had to construe the entire preamble if it construed a portion of it), citing Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985), overruled in part on other grounds by Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059, 1068 (Fed. Cir. 1998) (en banc in part). The Court in Cochlear Bone Anchored specifically held that even when a phrase in a preamble provides a necessary structure for a claim, that preamble structure does not necessarily convert the entire preamble into a limitation, particularly one that only states the intended use of the invention. 958 F.3d at 1355. Based on the current record, we find at least part of the preamble limiting because (1) the claim limitation relating to “probe,” relies on the preamble for antecedent basis. Accordingly, we find at least this portion of and is limiting. We need not reach a determination on whether the entirety of the preamble is limiting because at this stage of the proceeding, we are satisfied Petitioner has shown that Duvall in combination with the teachings of Chu would have render the preamble obvious to a person of ordinary skill in the art at the critical time.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that limitation b) requires a filtering process that produces the claimed residue from the filtering, followed by an analysis of the post-filtering residue. We also agree that the filtering and analysis is performed on status data. Nonetheless, as discussed in detail below, we find Duvall teaches the disputed limitation even under Patent Owner’s construction. We do not construe any other limitations or terms of the challenged claims because construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts a person of ordinary skill in the art at the time of the ’237 patent, “would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience.” Pet. 12 (citing Ex. 1003 ¶¶ 61–62). Patent Owner does not assert a different level of skill in the art at the time of the alleged invention at this time. Prelim. Resp. 28. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’237 Patent and the prior art of record, except that we eliminate vagueness as to the stated amount of academic or industry experience.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,159,237 - PTAB · Nov 17, 2023 · IPR2023-00889 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on all challenged claims 1–25 based on the petition’s obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . 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).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’641 patent specification and claim language do not support Patent Owner. Limitation 1.b refers to “post-filtering” residue in relation to filtering that occurs prior to arriving at the residue, it does not preclude further filtering of the residue. The ’641 patent specification supports this plain meaning on this preliminary record with respect to precluding filtering of residue, as Petitioner argues. Reply 1–2 (citing Ex. 1001, 8:51–62). At the cited passage, the ’641 patent specification describes “additional analysis” of “residue information,” and implies that “data discrimination analysis,” which includes “filtering,” is part of such “additional analysis”: Anomaly engine 2050 determines what residue information may be worthy of additional analysis and sends such information to communications and resource coordinator 2060 for forwarding to the SOC. Negative filtering, positive filtering, and residue analysis are examples of data discrimination analyses, other types of which are well-known to those skilled in the art. Ex. 1001, 8:59–65 (emphasis added).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks and citation omitted). Additionally, preamble language that merely states the purpose or intended use of an invention generally does not limit the scope of a claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering- Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). Yet, when the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 22
- Skill levelSkill level board ownDecided for petitioner
“of the ’641 patent, “would have had a B.S. degree in Computer Science, Computer Engineering, or an equivalent field, as well as at least 2–3 years of academic or industry experience in the design, analysis, and monitoring of computer networks, including issues of network security and network administration, or comparable industry experience.” Pet. 11 (citing Ex. 1003 ¶¶ 63–64). Patent Owner does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 31. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art, because it is consistent with the ’641 patent and the prior art of record, except that we delete the qualifier “at least” in the phrase “at least 2–3 years” to eliminate vagueness as to the stated amount of academic or industry experience.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,895,641 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 13, 2023 · IPR2023-00747 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 are obvious over Kim and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that 4 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 5 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00571], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1032, 1. We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related District Court litigation.6” slip op. at 7
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide provides that “multiple petitions by a petitioner are not necessary in the vast majority of cases” but acknowledges that “there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Although Patent Owner has raised no priority dispute at this stage, Petitioner 8 We omit both parties’ italicization of reference names throughout. notes the potential for a dispute regarding whether the references qualify as prior art. Notice 1–2. Patent Owner has not stipulated that any of the references at issue in the -00571 petition qualify as prior art. See CTPG 61 (permitting a patent owner to “seek to avoid additional petitions by proffering a stipulation . . . that certain references qualify as prior art”). Thus, there exists the potential for a prior art dispute during trial. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a) (see CTPG 61), in light of the potential for a prior art dispute and Patent Owner’s silence on the matter, we decline to exercise that discretion here.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’271 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A person of ordinary skill in the art (“POSITA”) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with telecommunications systems, including multiple-input multiple-output (“MIMO”) technology. Additional relevant work experience can compensate for less education, and vice versa. Pet. 8 (citing Ex. 1003 ¶ 81). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 9. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision, except that we do not include in our definition Petitioner’s last sentence regarding additional relevant work experience compensating for less education and vice versa, as this sentence is vague.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,951,271 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 13, 2023 · IPR2023-00571 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 are obvious over Liu and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[5] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that 4 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf. 5 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “if the PTAB institutes inter partes review, Petitioner ‘will not pursue in [Apex Beam Technologies LLC v. Samsung Electronics Co., Ltd. et al., Case No. 2:22-cv-00188-JRG (E.D. Tex.) (consolidated with Apex Beam Technologies LLC v. ZTE Corporation, Case No. 2:22-cv-00031-JRG-RSP (E.D. Tex.))] the specific grounds [asserted in IPR2023-00571], or . . . any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications).’” Ex. 1032, 1. We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to discretionarily deny institution in view of the related District Court litigation.6” slip op. at 7
- Parallel petitionsDecided for petitioner
“In the Notice, Petitioner states that although it “believes that both Petitions are meritorious and justified,” it ranks the Petition filed in this proceeding first and the -00747 petition second. Notice, 1. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a) (see CTPG 61), in light of Petitioner ranking this Petition first, we decline to exercise that discretion here.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Summary as to Claim 1 Based on the preliminary record before us, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Liu and Park. 4. Independent Claims 6, 11, 16 Petitioner sets forth similar arguments for independent claims 6, 11, and 16 as for claim 1. See Pet. 53–62. Patent Owner relies on the same arguments for these claims as it does for claim 1. Prelim. Resp. 24–25. For similar reasons as discussed above, Petitioner has shown a reasonable likelihood that claims 6, 11, and 16 would have been obvious over the combination of Liu and Park.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with telecommunications systems, including multiple-input multiple-output (“MIMO”) technology. Additional relevant work experience can compensate for less education, and vice versa. Pet. 9 (citing Ex. 1003 ¶ 81). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 9. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision, except that we do not include in our definition Petitioner’s last sentence regarding additional relevant work experience compensating for less education and vice versa, as this sentence is vague.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,951,271
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.