• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00973 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted ground.

  RulingsInstitution decision

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

    “For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 1. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that independent claim 1, or claims 2, 5, 7–10, 12–16, 18–22, 25, 28, 29, and 31 that depend therefrom, are anticipated by Hendel.” slip op. at 11

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

    “patent according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Consistent with the broadest reasonable construction, claim terms are presumed to have their ordinary and customary meaning as understood by a person of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 1 U.S. Patent No. 6,081,522, filed June 30, 1997, issued June 27, 2000 (Ex. 1007, “Hendel”). 2 U.S. Patent No. 5,938,736, filed June 30, 1997, issued Aug. 17, 1999 (Ex. 1008, “Muller”). 3 U.S. Patent No. 5,867,495, filed Nov. 18, 1996, issued Feb. 2, 1999 (Ex. 1019, “Elliot”). 2007). An inventor may provide a meaning for a term that is different from its ordinary meaning by defining the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes constructions for the terms “access control,” “associative memory,” “packet label,” “responsive,” and “megapacket.” Pet. 5–9. We determine that the terms “associative memory,” “packet label,” “responsive,” and “megapacket” do not require express construction for purposes of our Decision.” slip op. at 6

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

    “As to the term “access control,” Petitioner asserts that “[a] person of skill in the art would have understood ‘access control’ to encompass restrictions or modifications of the transmission of a packet.” Pet. 5. Petitioner relies on the following passage from the Specification: [T]he invention can be used to augment or override routing decisions otherwise made by the router, using the access control element 120. In addition to specifying the packet 130 is to be dropped or forwarded to the higher-level processor, the access control element 120 can alter the output interface, which was selected by the routing element 110, to another selected output interface. The invention can thus be used to implement QOS (quality of service), and other administrative policies. Ex. 1001, 6:9–18. Patent Owner asserts “the plain and ordinary meaning of ‘access control’ is ‘restriction of packets from being transmitted from selected source devices to selected destination devices.’” Prelim. Resp. 10. Patent Owner relies on the following passage from the Specification (id.): In a computer network for transmitting information, messages can be restricted from being transmitted from selected source devices to selected destination devices. In known computer networks, this form of restriction is known as “access control” and is performed by routers, which route messages (in the form of individual packets of information) from source devices to destination devices.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “‘discarding’ packets does not concern access control,” that Hendel’s “packets are only filtered or discarded as part of the packet forwarding process when there is a problem with the packet,” and thus, “Hendel refers to such filtering or discarding occurring when packets are ‘ill-formed’ or have ‘no appropriate destination[s]’ or ‘unsupported’ headers.” Prelim Resp. 21–22 (citing Ex. 1007, 8:39–40, 10:51–52, 13:9–11). We agree. Although we did not adopt Patent Owner’s proposed construction of the claim term “access result,” Patent Owner nevertheless makes a salient argument. We find Petitioner has not shown that the filtering decision is done “in response to [] at least one selected match” as required by claim 1. The Specification supports that a successful match leading to an access result is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by, among other things, “determining all of the successful matches”); see also Prelim. Resp. 21 (“the ‘matching entry,’ at most, provides a destination for Hendel’s system to forward the packet . . . [but,] where a destination is found, the packet is forwarded; there is no disclosure to generate any access result to possibly restrict access to the destination.”). Neither Petitioner, nor Petitioner’s Declarant, has tied an actual match in Hendel to a decision whether to forward the packet or make some modification to the intended transmission of the packet.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 19, 2015 · IPR2015-00976 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the patent did not disclose sufficient structure for certain means-plus-function limitations and Hendel did not show claim 63’s required access-control matching.

  RulingsInstitution decision

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

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Other

    “The corresponding structure need not be explicitly identified but must disclose to a person of ordinary skill in the art what structure is identified in the specification. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999). It is unclear from the Specification whether the CPU, shown in Figure 2 as part of access control element 120, is the “higher-level processor” which is described at Ex. 1001, 5:21–25, or some other processor running IOS described at Ex. 1001, 1:33–37. It is also unclear which part of the access control element 120 is composed of “circuits adapted to particular process steps and data structures” as described at 3:36–39. Here, the patent is at best unclear whether the claimed function is implemented in software executed on a general purpose CPU or in hardware as a collection of circuits. See Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009) (“That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in ‘means-plus-function’ form must disclose the particular structure that is used to perform the recited function.”). We also find that it is equally unclear whether the following means- plus-function limitations in claim 46, which appear to involve access control element 120, are implemented in hardware or in software structure (or some combination of both): means for matching matchable information, said matchable information being responsive to said packet label, with said set of access control patterns in parallel; means for making a routing decision in response to said access result; means for permitting or denying access for said packet; and means for receiving a packet label responsible to a packet, said packet label being sufficient to perform access control processing for said packet. Because the Specification of the challenged patent lacks sufficient disclosure of structure under 35 U.S.C. § 112, sixth paragraph, the scope of independent claim 46, and claims 47–52, 54, 56, and 59–62 that depend therefrom, cannot be determined without speculation and, consequently, the differences between the claimed invention and the prior art cannot be ascertained. Thus, we decline to institute an inter partes review as to any ground challenging claims 46–52, 54, 56, and 59–62.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner has not shown that Hendel’s filtering decision is determined based on “matching one or more characteristics of said packet with one or more access control specifiers.” Petitioner simply states that the packet is “filtered.” Petitioner’s Declarant relies on the following text from Hendel: “In a preferred embodiment, the merge logic 66 directs the input port 50i to take one of the following actions on a packet: filter the packet; forward the packet at layer 2; forward the packet at layer 2; forward the packet as a layer 3 flow; process the packet as a layer 3 route; and forward the packet as multicast router.”) Ex. 1003 ¶ 132 (citing Ex. 1007, 13:4–8.) This citation does not specify, however, that a characteristic of the packet was matched to anything in order to make the filtering decision, only that the decision was the result of “merge logic.” Petitioner’s Declarant also relies on the following text from Hendel: “After the forwarding logic 52 has determined what to do with the packet, it passes that information to the input port 50i. If the input port 50i does not filter the packet, then it [takes actions to forward the packet].” Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25.) However, this statement does not even say that forwarding logic tells input port 50i to filter the packet, and certainly does not explain how forwarding logic 52 would make a filtering decision. Finally, Petitioner’s declarant relies on Hendel’s discussion of sending the packet to a firewall for further processing if no match occurs (Ex. 1003 ¶ 132 (citing Ex. 1007, 9:21–25)), but the claim does not recite what happens if there is not a match. The specification confirms that a successful match is contemplated by the claims. Ex. 1001, 7:1–12, 27–39 (determining an input [or output] permission by “determining all of the successful matches”). Neither Petitioner, nor Petitioner’s Declarant, has tied the matching in Hendel to a decision whether or not to forward a packet. For the reasons stated above, we determine Petitioner has not shown sufficiently that Hendel discloses all of the limitations of independent claim 63. Accordingly, the information presented does not show a reasonable likelihood that Petitioner would prevail in showing that claim 63 is anticipated by Hendel.” slip op. at 14

  Claim construction§ 102 anticipation
  Patents in suitUS 7,023,853
• Arista Networks, Inc. v. Cisco Systems, Inc.Institution denied
  PTAB · Oct 6, 2015 · IPR2015-00974 · APJ Matthew R Clements · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving unpatentability under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

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

    “Systems, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may be authorized only if “the information presented in the petition . . . and any [preliminary] 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); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, we determine that the information presented by Petitioner does not establish that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent. Accordingly, pursuant to 35 U.S.C. § 314, we do not institute an inter partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 45–49, 51–64, 66, 67, and 69–72 of the ’668 patent.” slip op. at 2

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

    “interpreted according to their “broadest reasonable construction in light of the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015). Applying that standard, we interpret the claim terms according to their ordinary and customary meaning in the context of the patent’s written description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Petitioner proposes constructions for ten terms. Pet. 9–14. Patent Owner disputes some of those constructions and proposes an additional term for construction. Prelim. Resp. 9–19. For purposes of this Decision, we determine that we need not expressly construe any of the terms for which the parties have proposed constructions.” slip op. at 6

  • Skill levelOther

    “expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7. nothing in Habraken supports the determination that the network interface ports of all routers, such as the 3Com router described in Amara, are configurable by “internal applications” of that router. At best, Habraken establishes that a person of ordinary skill in the art at the time would have known that Cisco routers include a Setup dialog for configuring router interfaces. This is not sufficient, however, to persuade us that a person of ordinary skill in the art would have read Amara as necessarily disclosing that the network interface ports of the “device” are configurable by the internal applications.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Amara’s express disclosure is not sufficient. Amara’s disclosure that internal applications control or configure the device only “typically” suggests that they do not necessarily serve that purpose and, therefore, that another component of device 100 may serve that purpose. Moreover, Amara’s disclosure that internal applications control or configure the “device” is not sufficiently specific as to whether the interface ports are an aspect of the device being controlled or configured by the internal applications. Our reviewing court has held that a prior art reference that does not expressly disclose a limitation, may nevertheless anticipate if a person of ordinary skill in the art would understand the prior art to disclose the limitation and could combine the prior art description with his own knowledge to make the claimed invention. See Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000). After reviewing the arguments of the parties and the testimony of Dr. Lin, however, we are not persuaded that a person of ordinary skill in the art1 would understand the cited sentence in Amara as necessarily disclosing that the network interface ports of Amara’s internetworking device are configurable by its internal applications. Dr. Lin relies on pages 132 to 134 of Habraken, which is a textbook that describes, inter alia, configuring the interfaces of a Cisco router through a Setup dialog. While this passage describes configuring a port, it is not clear what aspect of the Cisco router is providing the Setup dialog. Nothing, for example, attributes the Setup dialog to “control plane processes” or “internal applications” or the like of the Cisco router. Even assuming that the Setup dialog is provided by an “internal application” of the Cisco router, 1 Petitioner asserts, and Patent Owner does not dispute, that a person of ordinary skill as of the critical date would have had a Master of Science Degree in an academic area emphasizing computer networking or, alternatively, a Bachelor Degree in an academic area emphasizing the design of electrical, computer, or software engineering and several years of experience in computer network engineering and the design of computer networks. Pet. 7.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 7,224,668
• Ebay Inc. v. Moneycat Ltd.All claims unpatentable
  PTAB · Sep 23, 2015 · CBM2014-00092 · APJ Minn Chung · CBM · Final written decision

  Claims 1, 2, and 4–11 are unpatentable as obvious over the instituted combinations of Teramura or Bernstein with the APA NetCash System, with Popolo added for specified dependent claims.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System. Pet. 41–52. Upon review of all of the parties’ papers and supporting evidence discussed in those papers, we are persuaded that Petitioner has demonstrated, by a preponderance of evidence, that claims 1, 2, 6–8, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System.” slip op. at 25

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

    “Currency Issuing Authority Trusted Server” The term “Currency Issuing Authority trusted server” appears in all claims of the ’602 patent. See Pet. 11–12. Petitioner proposes that the term “should be interpreted as a server trusted to make transactions using data packets issued from a particular CIA.” Pet. 12. Patent Owner had argued that Petitioner’s proposal does not comport with the broadest reasonable construction standard. Prelim. Resp. 24. In the Decision to Institute, we adopted Patent Owner’s construction of the term “Currency Issuing Authority trusted server” to mean a “server that is trusted by the Currency Issuing Authority” under the broadest reasonable interpretation standard. Dec. to Inst. 7 (citing Ex. 1001, col. 6, l. 65–col. 7, l. 6, col. 11, ll. 58–64). In the Patent Owner’s Response and the Petitioner’s Reply, the parties do not dispute the construction of this term or any other terms. We see no reason, therefore, to revise the claim construction adopted in our Decision to Institute. Accordingly, we construe the term “Currency Issuing Authority trusted server” to mean “a server that is trusted by the Currency Issuing Authority.” We see no need to construe expressly any other claim terms for purposes of this Decision. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). slip op. at 9

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

    “available to the public” for the purposes of 35 U.S.C. § 102 is a question of law based on underlying findings of fact. In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014) (citing In re Hall, 781 F.2d 897, 899 (Fed.Cir.1986)). The Federal Circuit “has interpreted § 102 broadly, explaining that even relatively obscure documents qualify as prior art so long as the public has a means of accessing them.” Id. (citing Hall, 781 F.2d at 899). 22 Our leading case on public accessibility is In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In Hall we concluded that “a single cataloged thesis in one university library” constitutes “sufficient accessibility to those interested in the art exercising reasonable diligence.” Id. at 900. Thereafter, in Constant v. Advanced Micro–Devices, Inc., we explained that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.” 848 F.2d 1560, 1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Id. Enhanced Sec. Research, LLC, 739 F.3d at 1354. The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). slip op. at 22

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

    “As discussed above, we determined that a person of ordinary skill in the art, at the time of the invention of the ’602 patent, would have been familiar with various conventional systems for electronic payments and electronic currency transactions, including two-step transaction systems that employ trusted intermediary “broker servers,” and would have understood the security problems to be an important issue in existing systems. In view of this knowledge of a person of ordinary skill and her awareness of the security issues, and in further view of the fact that, as discussed above, Teramura addresses the problems of theft and fraud in electronic currency transaction (see Ex. 1007, Abstract, 3:2–18) by using a trusted intermediary broker to send electronic money in two steps, we are persuaded by Petitioner’s arguments that a person of ordinary skill in the art would have been motivated to combine Teramura with the APA NetCash System to improve the security of the electronic currency transaction of the APA NetCash System. We are also persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been guided by Simon and motivated to co-locate the currency server of the APA NetCash System with Teramura’s intermediary broker to further increase the security of the combined system. In addition, we credit the testimony of Dr. Neuman, and 46 are persuaded that a person of ordinary skill would have been motivated by the double-spending problem addressed in the APA NetCash System and Simon’s teaching of currency swapping at the middleman to recognize that, in a combined system where the currency server and the intermediary broker are co-located, the middleman is a preferred location to place the coin exchange function. That is, a person of ordinary skill in the art would have found an internal coin exchange function at the middleman desirable. As discussed above, this means that an ordinary artisan would have found it desirable to have the broker check the coins received from the buyer with the co-located currency server, and, upon verification, replace them with new coins to be sent to the seller, as opposed to forwarding the coins “as-is” to the seller without checking them.” slip op. at 46

  Patent outcomesUS 7,590,602 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,590,602
• Ebay Inc. v. Moneycat Ltd.All claims unpatentable
  PTAB · Sep 23, 2015 · CBM2014-00091 · APJ Minn Chung · CBM · Final written decision

  Claims 1, 2, 4–6, 8, 10, and 11 are unpatentable as obvious over Teramura and APA NetCash, and over Bernstein and APA NetCash.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System. Pet. 34–46. Upon review of all of the parties’ papers and supporting evidence discussed in those papers, we are persuaded that Petitioner has demonstrated, by a preponderance of evidence, that claims 1, 2, 4–8, 10, and 11 are unpatentable under 35 U.S.C. § 103(a) over the combination of Teramura and the APA NetCash System.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “NetCash System, Exhibit 1008 (Simon), Exhibit 1009 (Neuman Declaration), and Exhibit 1012 (Neuman Reply Declaration). As the movant, Patent Owner bears the burden of proof to establish that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). For the reasons discussed below, Patent Owner’s Motion to Exclude is DENIED.” slip op. at 64

  • Skill levelSkill level board ownDecided for petitioner

    “On this record, we find that a person of ordinary skill in the art, at the time of the invention of the ’011 patent, would have been familiar with various conventional systems for electronic payments and electronic currency transactions, including two-step transaction systems that employ intermediary “broker servers” that can be trusted, and would have Resp. 26–29), the Board declined to do so for purposes of institution of trial. Dec. to Inst. 10–11. Therefore, Patent Owner is not justified to presume Dr. Neuman’s testimony is not part of the record in this proceeding and conclude it does not exist for the purposes of trial in this case. 28 understood the security problems to be an important issue in existing systems. In addition, the level of ordinary skill is relatively high and would require knowledge specific to electronic currency and electronic payment transactions. See Ex. 1001, col. 1, ll. 49–54 (“The problem of payments over the Internet is . . . a complicated one, because the use of credit cards over the Internet is unsafe, and because in many transactions the buyer does not wish to provide details of himself, or of his bank account.”) (emphases added).” slip op. at 28

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We are also persuaded by Petitioner’s argument that a person of ordinary skill in the art would have been guided by Simon and motivated to co-locate the currency server of the APA NetCash System with Teramura’s intermediary broker to further increase the security of the combined system. In addition, we credit the testimony of Dr. Neuman, and are persuaded that a person of ordinary skill would have been motivated by the double-spending problem addressed in the APA NetCash System and Simon’s teaching of currency swapping at the middleman to recognize that, in a combined system where the currency server and the intermediary broker are co-located, the middleman is a preferred location to place the coin exchange 47 function. That is, a person of ordinary skill in the art would have found an internal coin exchange function at the middleman desirable. As discussed above, this means that an ordinary artisan would have found it desirable to have the broker check the coins received from the buyer with the co-located currency server, and, upon verification, replace them with new coins to be sent to the seller, as opposed to forwarding the coins “as-is” to the seller without checking them.” slip op. at 47

  Patent outcomesUS 8,051,011 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,051,011
• Ebay Inc. v. Moneycat Ltd.All claims unpatentable
  PTAB · Sep 23, 2015 · CBM2014-00093 · APJ Minn Chung · CBM · Final written decision

  Claims 1–3, 5–11, and 13–23 are unpatentable as obvious over the four stated combinations of Teramura, APA NetCash, Bernstein, and Popolo.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “We are persuaded by Petitioner’s argument that the subject matter of claim 1 does not recite a technological feature that is novel and unobvious over the prior art. In the Decision to Institute, the Board analyzed, taking into account Petitioner’s and Patent Owner’s arguments, the steps recited in claim 1 relating to the operation of the CIAS and concluded that, even if the claimed process were novel and non-obvious, it does not render the ’578 patent a “technological invention.” Dec. to Inst. 9–10 (citing 77 Fed. Reg. at 48,764 (claim drafting technique “(b)”)). We see nothing in Patent Owner’s arguments in the Patent Owner’s Response that would justify altering this conclusion. Patent Owner asserts that the Board did not address previously the claimed feature that “the data packets of the first user are accessed and deactivated and never reach the second user [and] the second user receives new data packets.” PO Resp. 2. Similar to the discussion in the Decision to Institute (see Dec. to Inst. 9–10), accessing, deleting, and issuing data packets are known prior art methods of managing and manipulating digital data (see, e.g., Ex. 1001, col. 2, l. 47–col. 4, l. 6). Thus, even if the claimed 12 method, as a whole, is novel and non-obvious, reciting the use of known prior art technology to accomplish that method does not render the ’578 patent a “technological invention” under AIA § 18(d)(1) and 37 C.F.R. § 42.301. See 77 Fed. Reg. at 48,763–64. We also are persuaded by Petitioner’s explanation that the claimed subject matter does not solve a technical problem using a technical solution. We note that Petitioner and Patent Owner appear to agree that the solution of the ’578 patent is to provide an “intermediary server” between the first user and the second user to restructure the transaction in the prior art so that electronic currency is exchanged indirectly through the intermediary server, i.e., CIAS, rather than directly between the users. We agree with Petitioner that this rearrangement is not a “technical solution” because it adopts a traditional brokered transaction approach and applies it to the electronic currency transaction of the prior art. Accordingly, we are persuaded that Petitioner has met its burden of demonstrating that the ’578 patent is a covered business method patent under AIA § 18(d)(1) and is eligible for review under the transitional covered business method patent program.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artDecided for petitioner

    “developed at the University of Southern California.” PO Resp. 35. Patent Owner further argues that the Petition is not based on the Medvinsky publications or the “framework,” but, rather, is based on the description of the APA NetCash System in the ’578 patent, “which can only be considered non-102 ‘admitted prior art’ at best.” Id. Patent Owner does not describe the admissions made in the ’578 patent accurately. The ’578 patent’s admission described in the Board’s decisions includes two related, but independent components: (1) an admission regarding the prior art status of the APA NetCash System—i.e., it is a prior art system under § 102(a) as described in the Medvinsky-Neuman publications and as known or used by others in this country; and (2) an admission regarding the teachings of the APA NetCash System—i.e., the teachings of the APA NetCash System are described in column 2, line 47 through column 3, line 39 and Figure 2 of the ’578 patent. Patent Owner does not explain how relying on admission (2)— i.e., the ’578 patent’s representation that the teachings of the APA NetCash System are described in the patent—renders the APA NetCash System non- 102(a) prior art, essentially erasing admission (1) that the APA NetCash System is prior art under § 102(a). Absent countervailing considerations, the public is entitled to rely on the patentee’s representations made on the face of the ’578 patent as admissions regarding the NetCash prior art for purposes of patentability challenges, including using the ’578 patent’s description of the APA NetCash System as evidence of the teachings of the NetCash prior art. In Application of Nomiya, 509 F.2d 566 (CCPA 1975), when the appellants’ application included two figures, Figures 1 and 2, that were labeled as “prior art” and described as such in the specification, the court 15 held “[w]e see no reason why appellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered ‘prior art’ for any purpose, including use as evidence of obviousness under [Section] 103.” Id. at 570–71 (emphasis added).” slip op. at 15

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

    “Whether a document qualifies as a “printed publication” that is “available to the public” for the purposes of 35 U.S.C. § 102 is a question of law based on underlying findings of fact. In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014) (citing In re Hall, 781 F.2d 897, 899 (Fed.Cir.1986)). The Federal Circuit “has interpreted § 102 broadly, explaining that even relatively obscure documents qualify as prior art so long as the public has a means of accessing them.” Id. (citing Hall, 781 F.2d at 899). Our leading case on public accessibility is In re Hall, 781 F.2d 897 (Fed. Cir. 1986). In Hall we concluded that “a single 22 cataloged thesis in one university library” constitutes “sufficient accessibility to those interested in the art exercising reasonable diligence.” Id. at 900. Thereafter, in Constant v. Advanced Micro–Devices, Inc., we explained that “[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.” 848 F.2d 1560, 1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Id. Enhanced Sec. Research, LLC, 739 F.3d at 1354. The determination of whether a document is a “printed publication” under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). In this case, we are persuaded that Petitioner has shown by a preponderance of the evidence that the Teramura laid-open application was publicly accessible prior to August 26, 1999, the foreign priority filing date for the ’578 patent. To the extent that Patent Owner relies on Bruckelmyer to show Canadian laid-open applications, such as the Teramura application, are not “formally indexed,” Patent Owner’s argument is not persuasive because the application at issue in Bruckelmyer was not laid open for public inspection. First, the Canadian patent applications filed prior to October 1, 1989 were not open to public inspection. See Manual of Patent Office Practice (“MOPOP”) § 2.01.01 (Canadian Intellectual Property Office, 1998 ed.), available at https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr01566.html#itm2_01_01. Second, the prior art patent at issue in Bruckelmyer issued December 6, 1983. Bruckelmyer 445 F.3d at 23 1376. Hence, the application for the patent was filed before October 1, 1989, and, therefore, was not laid open for public inspection, unlike the Teramura application at issue in this case. Thus, Bruckelmyer has no bearing on the issue of whether Canadian laid-open applications, such as the Teramura application, are “formally indexed.” Based on the evidence and arguments provided by Petitioner, we are persuaded that the “interested members of the relevant public” could have obtained the Teramura application “if they wanted to” after the application was laid open to public inspection in the Canadian Patent Office on May 21, 1998. See Enhanced Sec. Research, LLC, 739 F.3d at 1354 (quoting Constant v. Advanced Micro–Devices, Inc., 848 F.2d at 1569) (internal quotation marks omitted). As reflected in the certified application file history, the Canadian Intellectual Property Office classified the Teramura application and indexed it. See Exhibit 1015, 3, 89 (showing classification according to the International Patent Classification (IPC) codes), 89 (showing indexing according to the International Identification (INID) codes). Accordingly, there is sufficient evidence to conclude that the Teramura application was publicly accessible prior to August 26, 1999, the foreign priority filing date for the ’578 patent.” slip op. at 22

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner’s declarant, Dr. Tygar, testifies that, at the time the ’578 patent was filed, “a person of ordinary skill in the art would have possessed a bachelor’s degree in computer science or in engineering with exposure to computer science or its equivalent.” Ex. 2012 (“Tygar Decl.”) ¶ 15. Due to the specific nature of the technology and problems at issue, the general education level of a person of ordinary skill, such as a bachelor’s degree in computer science or its equivalent, does not provide much guidance in this proceeding. See GPAC, 57 F.3d at 1579 (“In a given case, every factor may not be present, and one or more factors may predominate.”) (internal citation omitted). Dr. Tygar’s testimony also focuses on the prior art systems that require direct interaction between a payor and a payee, and does not address the middleman systems or features discussed by Dr. Neuman, other than to argue the lack of motivation to combine the middleman systems with the APA NetCash System, argument which does not rely on the level of ordinary skill in the art. Ex. 2012 ¶¶ 18– 34. On this record, we find that a person of ordinary skill in the art, at the time of the invention of the ’578 patent, would have been familiar with various conventional systems for electronic payments and electronic currency transactions, including two-step transaction systems that employ intermediary “broker servers” that can be trusted, and would have Resp. 24–27), the Board declined to do so for purposes of institution of trial. Dec. to Inst. 11. Therefore, Patent Owner is not justified to presume Dr. Neuman’s testimony is not part of the record in this proceeding and conclude it does not exist for the purposes of trial in this case. 28 understood the security problems to be an important issue in existing systems. In addition, the level of ordinary skill is relatively high and would require knowledge specific to electronic currency and electronic payment transactions. See Ex. 1001, col. 1, ll. 49–54 (“The problem of payments over the Internet is . . . a complicated one, because the use of credit cards over the Internet is unsafe, and because in many transactions the buyer does not wish to provide details of himself, or of his bank account.”) (emphases added).” slip op. at 28

  Patent outcomesUS 8,195,578 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,195,578
• Stryker Corporation v. Karl Storz Endoscopy-America, Inc.Institution denied
  PTAB · Sep 2, 2015 · IPR2015-00764 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “After considering the information presented in the Petition, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any of the claims challenged in the Petition. Accordingly, we do not authorize an inter partes review to be instituted as to any challenged claim of the ’657 patent.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “translator is within the surgical network5 and the signals pass without translation from that surgical network to the ancillary network, to which the ancillary medical devices are connected. See Ex. 1003, col. 6, ll. 26 (element 146 merely is a communication link). Petitioner argues that, because “[t]he control units 50 and 52 may provide output signals and commands that are incompatible with a computer,” the articulate arms (the ancillary medical devices) are not connectable with control units 50 and 52 absent translation. Pet. 14–15 (quoting Ex. 1003, col. 6, ll. 29–30). However, this argument is misplaced as the pertinent claim limitation is concerned with the “connectable” relationship between the ancillary device and the surgical network and Petitioner has included the purported translator within the surgical network. We determine that Petitioner has not explained adequately how the ancillary medical device is not connectable to the surgical network as required by independent claims 21 and 61. Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that Ghodoussi anticipates independent claims 21 and 61 and the respective dependent claims 22, 28–31, 35, 62, 68–71, and 75.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “referring to the “networks” identified by Petitioner in its Ghodoussi anticipation ground. In that scenario, we fail to see, and Petitioner does not adequately explain, why it would be obvious to add a translator to redundantly perform the function that Petitioner maintains is performed by the interconnect devices and network computer located within the surgical network. See id. Although Petitioner asserts one would have known how to use a translator “if needed,” Petitioner has not explained adequately why it would have been needed or why it would have been obvious to do modify Ghodoussi’s system to have a translator. Id. We have considered but find unpersuasive Petitioner’s argument that Ghodoussi provides a teaching, suggestion, or motivation through its recognition that different devices may communicate using different protocols. Pet. 55. Without more elaboration from Petitioner, we are left to speculate as to whether Petitioner is proposing a combination where different protocols are used. We determine that Petitioner has not set forth adequately an articulated rationale based on rational underpinning for combining the references’ teachings so as to render obvious the subject matter of the challenged claims.” slip op. at 13

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 7,844,657
• Nissan North America, Inc. v. Norman IP Holdings, LLCAll claims unpatentable
  PTAB · Aug 26, 2015 · IPR2014-00564 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 6–9 are unpatentable as obvious over Tokiwa and Smith and over Katayose and Smith; anticipation by Smith was not shown.

  RulingsFinal written decision

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

    “To start, we note that a general principle of claim construction counsels against interpreting claim terms in a way that excludes embodiments disclosed in the specification. Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276–77 (Fed. Cir. 2008) (“We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification”); see e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1369 (Fed. Cir. 2003) (finding district court’s claim construction erroneously excluded an embodiment described in an example in the specification, where the prosecution history showed no such disavowal of claim scope); NeoMagic Corp. v. Trident Microsystems, Inc., 287 F.3d 1062, 1074 (Fed. Cir. 2002) (“It is elementary that a claim construction that excludes the preferred embodiment ‘is rarely, if ever correct and would require highly persuasive evidentiary support.”’) (quoting Vitronics Corp. v Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)). Here, Patent Owner’s construction of “first logic circuitry” and “second logic circuitry” would exclude most, if not all, of the embodiments disclosed in the ’597 patent. Generally, a construction that excludes all disclosed embodiments is especially disfavored. Kaneka Corp. v. Xiamen Kingdomway Group Company, Nos. 2014-1373, 2014-1399, 2015 WL 3613644, at *4 (Fed. Cir. Jun 10, 2015). For example, claim 6 depends from cancelled claim 1 and includes the “first logic circuitry” and “second logic” slip op. at 7

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

    “Based on the complete record, we determine that Petitioner’s arguments are persuasive. Petitioner asserts Smith teaches a “mask override signal” because Smith discloses the ability to wake from a STOP mode when an interrupt is received, regardless of the mask signal. Referring to Figure 4, Petitioner asserts that the STOP mode, indicated by a logical “1” on the STOP output of flip-flop 100, is fed into the reset path of interrupt flip-flop 148 via NAND gate 180 and inverter 184. Pet. 21–22. The INT signal (at “1” when indicating an interrupt) and inverted C2 clock signal (“0” in STOP mode) are also inputs to NAND gate 180. Id. at 22. Based on these inputs, Petitioner adds that flip-flop 148 will be reset to logical “0,” regardless of the MASK1 signal. Id. Thus, Petitioner argues that Smith discloses an override that allows an interrupt to cause the processor to operate out of a low-power state, even if the interrupt is masked. Id. at 9–10. Petitioner also argues that “[a] person of ordinary skill in the art would have known that combining Smith’s ‘idle mode’ circuitry within Tokiwa’s interrupt mask disable circuitry would yield predictable, expected and beneficial results” of keeping a mask signal from preventing the processor from waking from an interrupt when in a low power state. Id. at 10. We are persuaded that Petitioner has established by a preponderance of the evidence that claim 6 would have been obvious over Tokiwa and Smith. Further, Petitioner provides detailed explanations of how each limitation of claims 7–9 is taught or suggested by the combination of Tokiwa and Smith. Pet. 19–20. For example, Petitioner asserts that Tokiwa’s OR gate 175 discloses “wherein the second logic circuitry comprises an OR gate” for claim 8. Accordingly, we are persuaded that Petitioner has established by a preponderance of the evidence that claims 7– 9 would have been obvious over Tokiwa and Smith.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Based on this discussion in the Petition, it is unclear how Smith discloses a mask signal. For example, if Petitioner relies on the MASK1 signal to teach a mask signal, Petitioner has not demonstrated by a preponderance of the evidence that Smith teaches a second logic circuitry that produces the MASK1 signal. Furthermore, to the extent that the Petition argues that other components disclosed in Smith teach the mask signal, we decline to speculate on what aspects of Smith satisfy this limitation. Accordingly, for claims 6–9, we determine that Petitioner has not shown, by a preponderance of the evidence, that these claims are anticipated by Smith.” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 16); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39).” slip op. at 33

  Patent outcomesUS 5,530,597 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,530,597
• Nissan North America, Inc. v. Norman IP Holdings, LLCAll claims unpatentable
  PTAB · Aug 26, 2015 · IPR2014-00563 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–4 are unpatentable as anticipated by AMD and as obvious over AMD and Maejima; the challenges to cancelled claims 5, 6, and 9 are moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “II. ANALYSIS A. Level of Ordinary Skill Neither party has made a statement about the level of ordinary skill in the art applicable to this case. We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Patent Owner does not contest Maejima is within the field of endeavor of the ’689 patent. We treat Maejima as representative of the level of ordinary skill in the art at the time of the invention.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner

    “Petitioner proposes constructions for four means-plus-function limitations: means for producing; means for disabling; means for receiving; and means for verifying. Id. at 6–7. Patent Owner has not proposed constructions for any of these limitations. In the Decision to Institute, we determined that the Petitioner’s 7 identification of the function and corresponding structure for these terms were consistent with the Specification of the ’689 Patent; therefore, we adopted them. Dec. 8. The parties do not dispute the constructions. PO Resp. 8; Reply 1–2. Based on the complete record now before us, we discern no reason to change the constructions; we adopt our previous analysis for the non-disputed claim terms. We find that none of the other terms recited in the claims need to be construed explicitly at this time.” slip op. at 7

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

    “said disable activation signal upon verification that a received shut-down entry request signal does meet said predetermined protocol requirement, which disable activation signal is conducted to said means for disabling. The structure corresponding with this limitation is a register access circuit. Pet. 8. Petitioner asserts that AMD’s disclosure of POWER-DOWN mode, which is described as being entered by “appropriate programming of the INIT and INIT2 registers,” meets this limitation. Id. at 11 (citing Ex. 1002, 9). In addition, AMD requires a special predetermined write procedure to modify the INIT2 register. Id. Thus, on the record before us, Petitioner has shown sufficiently that AMD discloses this limitation.” slip op. at 10

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

    “over AMD and Maejima. Pet. 54–56. Petitioner asserts this challenge because, inter alia, Patent Owner argued in the Reexam that Maejima lacks a “predetermined protocol requirement,” as recited by the all the challenged claims. Id. (citing Ex. 1009, 12–13). As explained above in Section II.C., we have found that AMD meets this limitation, as well as all other limitations of claims 1–4. As to motivation to combine AMD and Maejima, Petitioner states: A person of ordinary skill in the art at the time of the invention would have combined AMD and Maejima because they both pertain to reducing power consumption in microprocessors by stopping the clock signal and designs for accomplishing it. First, AMD teaches specifically that processors may need time to complete housekeeping tasks before clock signals are stopped, and the recognition and solution of that problem in AMD would pertain equally to other references disclosing clock signal stoppage designs. 17 Pet. 55–56. Thus, the Petitioner has provided evidence of sufficient rationale to combine AMD and Maejima. Additionally, we note that the discussion above in Sections II. B. and II. C. provides further description of how Petitioner has shown sufficiently that AMD and Maejima meet the limitations of claims 1–4. Thus, upon review of Petitioner’s and Patent Owner’s analysis and supporting evidence, we are persuaded that Petitioner has shown by a preponderance of evidence that claim 1, and claims 2–4, which depend ultimately from claim 1, would have been obvious over AMD and Maejima.” slip op. at 17

  Patent outcomesUS 5,502,689 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 5,502,689
• Symantec Corp. v. The Trustees Of Columbia University In The City Of New YorkInstitution denied
  PTAB · Jun 17, 2015 · IPR2015-00370 · APJ Howard B Blankenship · IPR · Institution

  The Board denied institution for claims 1–43 because every proposed obviousness ground relied on Cardinale, which was not shown to be a printed publication.

  RulingsInstitution decision

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

    “showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that Cardinale is a printed publication as contemplated by 35 U.S.C. §§ 102 and 311(b). III. CONCLUSION Because each proposed ground of rejection against the claims relies on a combination that includes Cardinale, the Petition fails to demonstrate a reasonable likelihood of prevailing on the grounds that the challenged claims are obvious over the prior art.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner

    “documentation tending to show the public accessibility of Cardinale prior to the filing date of the ’544 patent. Cf. Hall, 781 F.2d at 899 (examining affidavit in support of public availability of dissertation). We acknowledge that Cardinale contains the notation “[a]pproved for public release; distribution unlimited.” Ex. 1008, 3; see also id. at 243 (“Distribution Availability Statement”). Petitioner, however, has not provided evidence extrinsic to Exhibit 1008 tending to show when the thesis actually may have been released or distributed to the public. We observe also that Cardinale includes an Abstract and a list of subject terms (Ex. 1008, 243) that appear suited for facilitating an electronic-database search. The Petition points to no evidence, however, that the thesis was entered into an electronic database prior to the critical date, much less into a publicly accessible database prior to the critical date. Nor has Petitioner shown, for that matter, that the thesis was otherwise “sufficiently accessible to the public interested in the art.” Lister, 583 F.3d at 1311. “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). We conclude that, on this record, Petitioner has failed to meet its burden of at least a preliminary showing that Cardinale is a printed publication as contemplated by 35 U.S.C. §§ 102 and 311(b).” slip op. at 8

  § 102 anticipation
  Patents in suitUS 7,487,544

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.