• Charter Communications, Inc. v. Iarnach Technologies Ltd.Instituted
  PTAB · Feb 20, 2025 · IPR2024-01287 · APJ John R Kenny · IPR · Institution

  The Board instituted IPR on challenged claims 1–3 and 5–11 based on the asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial.

  RulingsInstitution decision

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

    “The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of the challenged claims of the ’982 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “(1) whether the court granted a stay or evidence exists that one may be granted if the Board institutes a trial; (2) the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; (3) the investment in the parallel litigation by the court and the parties; (4) the overlap in the issues raised by the petition and the issues in the parallel litigation; (5) whether the petitioner and the defendant in the parallel litigation are the same party; and (6) other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, IPR2020-00019, Paper 11 at 5–6. These factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. Further, Fintiv instructs that the Board should take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.; see PTAB Consolidated Trial Practice Guide at 55–56, 58 (Nov. 2019) (“CTPG”).10” slip op. at 50

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingPreamble not limitingMixed

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotations omitted) (quoting Pitney Bowes v. Hewlett- Packard Company, 182 F.3d 1298, 1305 (Fed. Cir. 1999)). “Conversely, a preamble is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Id. (citations omitted). “[T]he rule against giving invention-defining effect to intended-use preamble language reflects . . . the ‘well settled’ fundamental principle ‘that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”’ Arctic Cat Inc. v. GEP Power Prods., Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). On the current record, we determine that the recitation of “a DOCSIS Provisioning Of EPON (DPOE) system” in the preamble of claim 1 is limiting because it provides the antecedent basis for the term “the DPOE system” in body of claim 1 (e.g., limitation 1a). We, however, have not received specific arguments from the parties as to why the entire preamble of claim 1 would be limiting based on the antecedent basis provided by “a DOCSIS Provisioning Of EPON (DPOE) system.” Further, as discussed above, Patent Owner does not provide any explanation of or support for its assertion that the preambles of claims 1 and 6 serve to define the invention that is claimed and are not simply a description of the prior art. Prelim. Resp. 22. Because we do not need to resolve the issue of whether the entire preamble of claim 1 is limiting to decide whether to institute inter partes review, we will wait for further briefing from the parties before deciding whether the entire preamble of claim 1 is limiting. For claim 6, we determine that the recitation of “a DOCSIS Provisioning Of EPON (DPOE) system” in the preamble is not limiting because it does not provide the antecedent basis for any term in the body of claim 6. As mentioned, limitation 6a recites “a DPoE system,” rather than the DPOE system. Further, as discussed above, Patent Owner does not provide any explanation of or support for its assertion that the preambles of claims 1 and 6 serve to define the invention that is claimed and are not simply a description of the prior art. We do not independently see such support in the record. Thus, for this Decision, we determine that the preamble of claim 6 is not limiting. Patent Owner argues that the preamble of claim 4 is limiting. Prelim. Resp. 23 (“the preamble is limiting in all the independent claims.”). For this Decision, as set forth in Sections III.A.6.a and III.C.3 below, we do not need to determine whether the preamble of claim 4 is limiting in light of Petitioner’s showings. slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. Patent Owner “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill (Pet.[] 11), Petitioner has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’982 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14

  Claim constructionDiscretionary denial
  Patents in suitUS 9,287,982
• Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art 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), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8

  • PTAB / AIA Trials › §315(e) estoppelMixed

    “Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9

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

    “caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26

  Patent outcomesUS 10,681,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,009
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 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

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11

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

    “1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12

  • ExcludeMotion to exclude, grantedGranted

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  Patent outcomesUS 10,193,917 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,193,917
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 17, 2023 · IPR2021-01519 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–5, 9–12, 15, 16, and 20–23 are unpatentable as obvious over Plassmann, Treuillet, and Staller, with Peng added for claims 21–23.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “In the Decision to Institute, we declined to construe this term as a means plus function term under 35 U.S.C § 112(f). Dec. to Inst. 9–12. Although Petitioner disagrees and asserts that the term “device for stereophotogrammetry” should be construed under 35 U.S.C. § 112(f), Petitioner presents no arguments other than those in the Petition that we addressed in the Decision to Institute. Reply 7–8. Petitioner further acknowledges that “an express construction may not be necessary for the Board to evaluate patentability.” Id. at 8. For the reasons discussed in the Decision to Institute, we do not construe device for stereophotogrammetry configured for an acquisition of two views according to two different angles as a means plus function term under 35 U.S.C. § 112(f). Our Decision to Institute applied the plain and ordinary meaning to this term without any express construction to the remaining language of this limitation, including “configured for an acquisition of two views according to two different angles.” Dec. to Inst. 9–11. In the context of the challenged claims, the parties dispute the implications of the plain and ordinary meaning.” slip op. at 8

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

    “Having considered the claim language, the specification, the prosecution history, and the extrinsic evidence, for the reasons discussed below, we conclude that the claim language does not mean that the sub-optics are angled, but instead means that they each view a subject from different angles.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We also agree with Petitioner that “the preamble here is not limiting, because the body of the claim provides a complete description of the device.” Reply 6–7 (citing Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The preamble for claim 1 recites “[a] device for stereophotogrammetry,” but “[g]enerally, the preamble does not limit the claims.” Ex. 1022, 11:42; Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229, 1236 (Fed. Cir. 2017). Regardless, as Petitioner notes, no “canon of claim construction is absolute in its application and [] some surplusage may exist in some claims.” Reply 7 (alteration in original) (quoting Decisioning.com, Inc. v. Federated Dep’t Stores, Inc., 527 F.3d 1300, 1312 n.6 (Fed. Cir. 2008) (acknowledging that proper construction of “remote interface” arguably “render[s] the term ‘public’ in [a dependent claim] surplusage”)).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Treuilett discloses the actual focal length of their lenses, but Dr. Otto states that a person of ordinary skill would understand such devices may be used with any lens suitable to the subject. Pet. 50. We agree with Petitioner that Dr. Otto’s testimony provides sufficient reasoning with rational underpinning to support the proposition that a person of ordinary skill in the art would have known how to select the requisite lenses to achieve the results recited in claim 11. See KSR, 550 U.S. at 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Having considered the arguments and evidence of record, for the reasons discussed above, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teaching of Plassmann, Treuilitt, and Staller and that their combined teachings would have disclosed or suggested the subject matter of claim 11 to a person of ordinary skill.” slip op. at 65

  Patent outcomesUS 10,681,334 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,334
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 9, 2023 · IPR2021-01518 · APJ John D Hamann · IPR · Final written decision

  Claims 1–4, 8–12, 15, 16, and 20–23 are unpatentable under § 103 over the stated combinations of Plassmann, Treuillet, and Staller, with Kingslake or Peng as applicable.

  RulingsFinal written decision

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

    “We disagree with Patent Owner. Rather, we conclude that the claim language does not mean that the sub-optics’ optical axes are angled, but instead means that the sub-optics each view a subject from a different angle, as Petitioner argues. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,7 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. Reply. 8; PO Resp. 23; see generally PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find sufficient support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Compare Ex. 1003 ¶ 20 (requiring a master’s degree), with Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

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

    “We disagree. Patent Owner does not provide an analysis demonstrating that its Infinity product is coextensive (or nearly coextensive) with the challenged claims. Rather, Patent Owner cites to the following testimony of Dr. van der Weide: “I have reviewed the LifeViz Infinity device and conclude that it embodies the invention of the [’]253 Patent. More specifically, the Infinity possesses all the features listed in claim 1 of the patent.” Id. (citing Ex. 2013 ¶ 213). Simply put, Patent Owner fails to provide any analysis whatsoever. Id.; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, Patent Owner’s reliance on WBIP is misplaced. In that case, “WBIP presented evidence that specific products . . . [we]re embodiments of the invention as claimed in the asserted claims,” and that provided a basis for finding a presumption of nexus. WBIP, 829 F.3d at 1329–31. Such is not the case here. In sum, Patent Owner does not provide the required analysis demonstrating that Infinity is coextensive (or nearly coextensive) with the challenged claims. PO Resp. 55; Lectrosonics, Paper 33 at 33. We, therefore, find that a presumption of nexus is inappropriate.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Ex. 1020, 11:46–57. We agree with Petitioner and find that the combination of Plassmann, Treuillet, and Staller teaches this limitation. First, we agree with Petitioner and find that Plassmann teaches a positioning system that uses a pair of light beamers to signal when a target subject is reaching a predefined distance position to the camera. See Ex. 1007, Fig. 1A (light beamers 6a, 6b); Pet. 33. Plassmann teaches that light beams converge at a predefined distance “corresponding to the distance in which the camera lens is focussed.” Ex. 1007, 12:7–13. More specifically, Plassmann states the following: The apparatus is also provided with two low-powered light emitting diodes (LEDs) 6a, 6b, each provided with a focussing lens to produce a beam of light and being arranged so that the beams converge and meet at a point a fixed and desired distance from the apparatus, this distance corresponding to the distance at which the camera lens is focussed. Id.; Pet. 34. Accordingly, we find that Plassmann teaches the limitation, save for having a second predefined distance position—if there are two different distance positions, one necessarily is closer to the camera body and the other one farther. Ex. 1007, 12:7–13, Fig. 1A. Second, we agree with Petitioner and find that Staller teaches a positioning system having more than one predefined imaging distance position. Pet. 38. More specifically, we find that Staller teaches a strobe diffuser attachment for a camera, which includes a “distance measurement device [that] may be adapted to selectively produce one of a plurality of pairs of light beams which intersect at different repeatable distances from the diffuser body.” Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”); Pet. 38. In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. We also agree with Petitioner and find that Staller teaches that its “distance indicator improves the usefulness of close range photography by providing a repeatable scale to photographs[, which] . . . improves the usefulness of close ranges photographs for medical and other organic growth measurement applications.” Ex. 1006, 6:10–15; Pet. 38. In addition, we agree with Petitioner and find that Plassmann teaches that “[s]tereoscopic imaging has been known for many years,” and “ha[s] been used to measure the shape of wounds and the like which are otherwise difficult to measure by conventional techniques.” Ex. 1007, 1:6–15; Pet. 35. We also agree with Petitioner and find that it was known in the art before the ’253 patent to use a camera having multiple predefined distances for imaging a subject in connection with wound or lesion treatment. See Ex. 1017,17 579; Ex. 1011,18 164, Fig. 2, Table 2; Ex. 1008,19 481.” slip op. at 42

  Patent outcomesUS 10,165,253 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,165,253
• Canfield Scientific, Inc. v. Quantificare S.A.All claims unpatentable
  PTAB · Mar 9, 2023 · IPR2021-01511 · APJ Brian D Range · IPR · Final written decision

  Claims 1–4 and 8 are unpatentable as obvious over Plassmann, Treuillet, and Staller; claims 9–11 are unpatentable as obvious over those references and Peng.

  RulingsFinal written decision

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

    “We find this argument unavailing. Rather, we agree with Petitioner and determine that the claim language does not mean that the sub-optics are angled but instead means that they each view a subject from different angles. Ex. 1020, 11:43–45; Pet. Reply 7. Specifically, this limitation recites that the two sub-optics are “configured for a simultaneous acquisition of two views according to two different angles.” Ex. 1020, 11:43–45. Notably, “according to two different angles” directly follows “two views,” rather than directly following “configured.” Id. And “view” means “[a] scene or an arrangement of subject material for a photograph,” according to a technical dictionary provided by Patent Owner. Ex. 2014,6 210 (defining “view”). In other words, the term “view” itself refers to viewed subject material—a target subject.” slip op. at 13

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties do not substantively address the differences in their proposed definitions for one of ordinary skill in the art. Pet. 15; PO Resp. 23; see generally Reply; PO Sur-reply. Moreover, the parties agree that which definition we adopt does not substantively impact our analysis of the parties’ arguments concerning unpatentability. Tr. 29:19–30:9, 75:20–25. Because Patent Owner’s definition of the level of skill in the art is consistent with the ’253 patent and the asserted prior art, we adopt it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). In addition, we do not find support in the record for requiring one of ordinary skill in the art to have had a master’s degree. Pet. 15; Ex. 2013 ¶ 31 (testifying why a master’s degree was unnecessary). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 11

  • ExcludeMotion to exclude, deniedMixed

    “Otto rely on Treuillet for what the Treuillet reference teaches to a person having ordinary skill in the art at the relevant time. Treuillet’s suggestions to a person having ordinary skill in the art remain relevant even if Treuillet were factually incorrect in some respects. Second, even if considered hearsay, Dr. Otto properly relied on Treuillet. Opp. Mot. Excl. 4–7. Under Federal Rule of Evidence 703, an expert may rely on facts and data that “need not be admissible,” including hearsay (double or otherwise). Here, the evidence supports that Treuillet was published in an independent, respected, and peer-reviewed IEEE journal. Id. at 5–6 (citing evidence regarding reliability of the IEEE journal). In addition, we find unavailing Patent Owner’s arguments concerning “Reference 45.”5 Mot. Excl. 3–5; Reply Mot. Excl. 1–5. Rather, we find that it is appropriate for an expert also to rely on the sourcing in article published in such an IEEE journal. Thus, Treuillet is the kind of evidence we would expect an expert witness or person having ordinary skill in the art to rely upon, and Dr. Otto was entirely reasonable on relying on Treuillet in forming his opinions Third, even if Treuillet were inconsistent with other evidence, such as Plassmann, this issue would go to the credibility of Dr. Otto’s testimony and the weight given to it in deciding ultimate issues of fact rather than admissibility in the first instance. For the reasons above, we deny Patent Owner’s motion to exclude with respect to Dr. Otto’s testimony.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner persuasively argues that Treuillet teaches that the Plassmann MAVIS II device may take acceptable wound photographs from 65 centimeters to 95 centimeters (within its “depth of field”). Pet. 36; Ex. 1003 ¶ 113; Ex. 1016, 755. A person of skill in the art would have understood that acceptable medical wound photographs would have to be adequately focused and that Treuillet, therefore, suggests a depth of field from 65 centimeters to 95 centimeters for the Plassmann device. Ex. 1003 ¶ 113 (explaining that a person of skill in the art would understand that Plassmann has an expanded depth of field because it can “accurately image a subject at multiple positions”). Petitioner then relies on Staller as teaching multiple light beamers to define more than one imaging position within a depth of field. Pet. 41–42; Ex. 1006, Fig. 4, 2:29–34, 5:56–6:2. Staller teaches plurality of pairs of light beams that “intersect at a different repeatable distance from the diffuser body.” Pet. 23; Ex. 1006, code (57), 2:29–32, 5:13–15; see also id. at 5:56– 6:2 (“[T]wo pairs of light beam emitters . . . may be used to provide three or four separate pairs of intersecting bea[m]s and three or four corresponding repeatable distances for diffuser 10.”). In other words, Staller teaches having at least two distinct predefined distance positions for the camera. Ex. 1006, code (57), 2:29–32, 5:13–15, 5:56–6:2. The advantage of the plurality of pairs of light beams is taught by Staller: repeatability. Ex. 1006, 6:10–15 (referring a concern for “repeatable scale” to “improve[] the usefulness of close range photographs for medical” applications). Petitioner persuasively argues that a person of skill in the art would have been motivated to predefine two distances from a device in order to provide for varying levels of magnification. Pet. 45–46. Petitioner persuasively explains that a person of skill in the art would have had a reasonable expectation of success in combining the references’ teachings. Id. at 46–47.” slip op. at 40

  Patent outcomesUS 10,070,119 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,070,119
• Apple Inc. v. Aire Technology LimitedInstituted
  PTAB · Jan 4, 2023 · IPR2022-01136 · APJ Brian J Mcnamara · IPR · Institution

  Instituted IPR on all challenged claims and grounds: claims 1–3, 8–11, and 15, including grounds the Board found unlikely to succeed.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “exercise our discretion to deny the Petition in favor of the parallel Apple litigation identified above taking place in the U.S District Court for the Western District of Texas (“the Texas court”). Prelim. Resp. 1–10. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 4

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

    “We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 14

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

    “Tobergte and O’Toole differ in two ways: (1) unlike Tobergte, O’Toole does not rely on magnetic coupling, and (2) unlike Tobergte, O’Toole deactivates its receiver, as well as its associated circuitry. Nevertheless, Tobergte discloses that its continuously operating receiver circuit “requires only a very small amount of electric energy” in much the same way that O’Toole’s continuously operating timer uses only a small amount of energy compared to the remainder of the integrated circuit. We further note that in both Tobergte and O’Toole, operation at normal power levels occurs after the receiver detects the presence of a valid data signal. We agree with Petitioner that a person of ordinary skill would have circuits would reduce power consumption. As discussed below, however, it is not clear why a person of ordinary skill would have reason to include O’Toole’s timer, which is active and therefore consumes power in the sleep mode, into Tobergte’s receiver, which, because it is passive, consumes very little power when not in the presence of a nearby data carrier. 3. Claim 8 Claim 8 depends from claim 1. Petitioner designates as claim limitation 8.1 the claim’ s sole recitation “wherein the switching apparatus has a time controller for cyclically switching the measuring device on and off.” Petitioner maps Tobergte’s receiver 36 to the claimed measuring device. Pet. 63 (citing Ex. 1005, 3:42–45, 4:11–14). Petitioner notes that Tobergte’s receiver circuit “is ‘continually kept in operation’ to monitor for voltage indicative of a nearby data carrier and activate the switch if such voltage is detected.” Id. (citing Ex. 1005, 4:4–11). Petitioner posits that a person of ordinary skill would have had reason to connect O’Toole’s wakeup timer between Tobergte’s receiver device and Tobergte’s switch to its energy source to form a more intelligent switching apparatus that cyclically activates and deactivates Tobergte’s receiver at periodic intervals. Id. at 65– 66. Although we agree with Petitioner that a person of ordinary skill would have understood that cyclically operating circuitry in a wireless data communications device reduces its power consumption and preserves battery life, it is not clear why an ordinarily skilled artisan would have had reason to apply O’Toole’s techniques to cycle Tobergte’s receiver on and off. Tobergte’s continuously operating receiver consumes little power when not in presence of a data carrier. Ex. 1005, 4:4–11. O’Toole’s timing circuit remains active and consumes power during the sleep mode. Ex. 1008, modification against each other, to determine whether there would be a motivation to combine. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000); see also Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331–32 (Fed. Cir. 2019). Petitioner has not explained why an ordinarily skilled artisan would have had reason to introduce additional complexity and power consumption to Tobergte by adding a power consuming sleep timer to periodically deactivate a receiver (the claimed measuring device) that itself consumes little power when not in the presence of a data carrier On the current record, we are not persuaded that Petitioner has demonstrated a person of ordinary skill would have combined the teachings of Tobergte and O’Toole to arrive at the limitations recited in claim 8.” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,174,360
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00699 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–5 over Cheng, claims 1–3, 6–11, and 12–18 on the stated Cheng-based grounds, including combinations with Shirali and Douglas.

  RulingsFinal written decision

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

    “Investments, LLC d/b/a Brazos Licensing and Development (“Patent Owner”), filed a Preliminary Response. Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on October 18, 2021, as to all challenged claims and all grounds of unpatentability. Paper 11 (“Dec. on Inst.”).” slip op. at 2

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

    “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). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary 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 v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

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

    “IV. CONCLUSION43 Petitioner has shown, by a preponderance of the evidence, that: (1) claims 1–5 are anticipated by Cheng; (2) claims 1, 2, 6–10, and 12–18 would have been obvious over” slip op. at 83

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Petitioner’s rationale for combining Nishio with Cheng is faulty because it misstates Nishio’s teachings. Dec. on Inst. 40–41. We found that “Nishio does not teach that setting an arbitrary number of subcarriers avoids reporting for each subcarrier,” and, rather, that “Nishio achieves this efficiency by averaging CIRs of the usable blocks and transmitting to the base station only a CQI corresponding to the averaged CIR together with the block numbers.” Id. (citing Ex. 1009 ¶¶ 60, 66). Accordingly, we determined that Petitioner had not established a reasonable likelihood that the subject matter of claim 4 would have been obvious over the combination of Cheng and Nishio. Id. at 41.” slip op. at 77

  Patent outcomesUS 7,742,534 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,742,534
• Apple Inc. v. Omni Medsci, Inc.Some claims unpatentable
  PTAB · Aug 3, 2022 · IPR2021-00453 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1, 2, 7, and 15–23 are unpatentable under the asserted obviousness grounds; claims 3–6 and 8–14 were not shown unpatentable.

  RulingsFinal written decision

  • BurdenMixed

    “evidence, we conclude that Petitioner has demonstrated by a preponderance of the evidence that challenged claims 1, 2, 7, and 15–23 are unpatentable and that Petitioner has not demonstrated challenged claims 3–6 and 8–14 to be unpatentable.” slip op. at 2

  • Skill levelOther

    “7 The level of ordinary skill in this case is discussed in the Decision to Institute and is uncontested. Dec. to Inst. 7–8.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed patent owner constructionDecided for patent owner

    “Specification concerning the terms “identify” and “detect” involve actions not recited in the claims does not change the fact that these different claim terms are presumed to have different meanings. The dictionary definitions of “detect” and “identify” are different. The use of the term “identify” in claims 3 and 8 and the use of a different term, i.e., “detect,” in claim 16 indicates that the claims 3 and 8 mean something different from claim 16. Petitioner has not rebutted the presumption that different claim terms have matter. See SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 431 (Fed. Cir. 2016). Therefore, we decline to adopt Petitioner’s proposal to construe the terms “identify an object” and “detect an object” to have the same meaning. Instead, we construe these terms consistent with the dictionary definitions of “identify” and “detect,” i.e., we construe “to identify an object” to mean “to recognize or establish an object as being a particular thing,” and we construe “to detect an object” to mean “to discover or notice the existence or presence of something.” We address the specific implications of these constructions in our discussion of claims 3, 8, and 16.” slip op. at 9

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

    “Specification concerning the terms “identify” and “detect” involve actions not recited in the claims does not change the fact that these different claim terms are presumed to have different meanings. The dictionary definitions of “detect” and “identify” are different. The use of the term “identify” in claims 3 and 8 and the use of a different term, i.e., “detect,” in claim 16 indicates that the claims 3 and 8 mean something different from claim 16. Petitioner has not rebutted the presumption that different claim terms have matter. See SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 F.3d 419, 431 (Fed. Cir. 2016). Therefore, we decline to adopt Petitioner’s proposal to construe the terms “identify an object” and “detect an object” to have the same meaning. Instead, we construe these terms consistent with the dictionary definitions of “identify” and “detect,” i.e., we construe “to identify an object” to mean “to recognize or establish an object as being a particular thing,” and we construe “to detect an object” to mean “to discover or notice the existence or presence of something.” We address the specific implications of these constructions in our discussion of claims 3, 8, and 16.” slip op. at 9

  Patent outcomesUS 10,517,484 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,517,484

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.