- Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentablePTAB · Nov 20, 2023 · IPR2022-01126 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Kioxia Corporation and Kioxia America, Inc. filed a petition and a motion for joinder in IPR2023-00408 and have been joined as petitioners to this proceeding. INTRODUCTION A. Background and Summary Western Digital Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking an inter partes review of claims 1, 2, 4, 8, 15, 17, and 19 (the “challenged claims”) of U.S. Patent No. 8,615,700 B2 (Ex. 1001, “the ’700 Patent”). Viasat, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We instituted an inter partes review. Paper 13 (“Institution Decision” or “Inst. Dec.”). Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”) filed a substantively identical petition, and we granted institution and joined Kioxia as a petitioner to this proceeding. Paper 25 (copy of Paper 9 from IPR2023-00408).” slip op. at 1
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams. After quoting from Dr. Dolecek’s deposition testimony (Ex. 2023 ¶ 107 (quoting Ex. 2024, 32:15–22)), Dr. Bagherzadeh asserts that “Dr. Dolecek does not explain how she believes the intra-channel operation of the Scrambler on the ‘one long data stream’ it receives could generate a account Dr. Dolecek’s testimony in response to follow-up questions from Patent Owner. Q So you have found the plurality of data streams in the three arrows of Figure 8 going from the scrambler to the ECC engines? A Yes. . . . Q And how exactly, in your understanding as a person of skill, does the scrambler generate that plurality? . . . THE WITNESS: . . . So the person of ordinary skill in the art would understand that these are multiple arrows here indicated explicitly to suggest parallel operations of the ECC engines. And for them to have parallel operations, a person of ordinary skill in the art would assume that they are receiving inputs at the same time, and the scrambler would, for example, do that by sending descrambled data to different engines at a time, one at a time. . . . Q So how does the scrambler’s function of intrachannel rearrangement generate multiple data streams? . . . THE WITNESS: Once it’s descrambled on a per-block basis, it simply sends that block to a given engine, ECC engine. . . . Q Can the scrambler send out multiple data streams in parallel at the same time? A If it’s designed like that, yes. Ex. 2024, 32:24–34:7 (objections and witness’s false start omitted). Q So describe for me how in Figure 8 that would work for your analysis where the scrambler receiving the data from the multiplexer would then generate the plurality of partially decoded data streams. A Right. Figure 8. So if it receives a long string of data that has already been processed by the 104 unit, it would perform intra- -- intrachannel, if you will, intrablock disarrangement of data. And then it could” slip op. at 18
Patent outcomesUS 8,615,700 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Netgear, Inc. v. WSOU Investments, LLC, D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 12, 2023 · IPR2022-00606 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–4, 6, 10, and 12 are unpatentable as obvious over Gouriellec; the majority did not reach the Everdingen grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“A. “marking incoming control packets . . . according to a receiving rate of control packets” (part of Claim Limitation 1.b) Claim limitation 1.b recites, inter alia, “marking incoming control packets . . . according to a receiving rate of control packets.” Patent Owner contends that this portion of claim limitation 1.b means that incoming 2 We apply the per-AIA provisions of the statute, as the application for the ’630 patent was filed before March 16, 2013. 3 U.S. Patent Publication No. 2002/0031091 to Michiel van Everdingen, “Method and a Device for Controlling Source Specific Data Flow,” filed August 31, 2001 (“Everdingen”) (Ex. 1004). 4 U.S. Patent No. 7,133,360 to Louis Le Gouriellec et al., “Conditional Bandwidth Subscriptions for Multiprotocol Label Switching (MPLS) Label Switched Paths (LSPS),” filed May 7, 2002 (“Gouriellec”) (Ex. 1005). ‘control packets’ (i.e., a particular type of packet), (2) they must all be ‘received at said first plurality of inputs’ and (3) they include only those that are ‘to be processed according to a first routing protocol.’” Sur-reply 1 (citing PO Resp. 5–6; Ex. 1001, 6:31–37, 6:50–55) (brackets omitted); see also PO Resp. 10–11. Petitioner’s expert Dr. Akl generally agrees that in the ’630 patent “[t]he marking is defined in function of the receiving rate of control packets being received at an identical subset of inputs and being to be processed by the common processor according to an identical protocol.” Ex. 1003, Akl Decl. ¶ 73 (citing Ex. 1001, 2:48–51, 2:66–3:3). Given this general agreement between the parties, we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets.” Notwithstanding the parties’ apparent agreement on the issues discussed above, according to Patent Owner, Petitioner advanced a new claim construction position in the Petitioner Reply, namely that this limitation is “satisfied by indiscriminately marking according to a receiving rate of all packets, regardless of whether each one of the ‘incoming packets’ is a ‘control packet’ satisfying all the criteria expressly set forth in the claim language.” Sur-reply 2 (citing Pet. 21; Ex. 1003, Akl Decl. ¶ 75). Although Patent Owner cites arguments presented on page 21 of the Petition, Patent Owner argues Petitioner’s Reply advances a new argument because it argues “that ‘control packet’ should be construed to mean ‘the header portion of a packet that can also include user data (a ‘data packet’).” Id. (citing Pet. Reply 7). According to Patent Owner “under Petitioner’s new and shifted interpretation ‘control packet’ refers to the header portion/part of any kind of packet, including data packets.” Id. arguments were new—which they are not (see, e.g., Pet. 20–21; Dec. to Inst. 16–19)—we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets,” as mentioned above. We further note that Patent Owner’s arguments implicate the proper construction of “control packet,” which we discuss in greater detail directly below. See Section VI.B herein.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“As the ’630 patent provides no reference to an industry-standard use of the terms “control packet” and “data packet,” we cannot determine from the ’630 patent whether there is a plain and ordinary meaning of the terms “control packet” and “data packet.” The record also does not provide sufficient information to determine the plain and ordinary meaning of “control packet” to an ordinarily skilled artisan. For example, Petitioner’s reference to Nandy as describing a control packet is not determinative. Pet. 20–21 (citing Ex. 1007, code (57), 2:52–54), Hr’g Tr. 14:26–15:2. Nandy describes a control packet as one that functions as a sensor, i.e., as a header packet injected into a network at an edge router to sense congestion along the path of aggregated data, such that the loss of a control packet slows the transmission of data. Ex. 1007, 5:22–30, 5:57–6:2, 7:7–18. Patent Owner acknowledges that packets can contain headers with control information, but defining a control packet that broadly “there would be no basis by which you could distinguish the control packet from a data packet.” Hr’g Tr. 22:24– 23:5, 40:4–16 (arguing that if information in a packet that routes the packet correctly is sufficient to qualify a packet as a control packet, “it would vitiate this specific limiting lexicography and render every packet that a router receives as control packet which is not consistent with the intrinsic evidence.”). According to Patent Owner, in the ’630 patent a control packet is “not a packet containing information to route a packet, it is a packet used to create the forwarding path, bring into existence the forwarding path.”). As discussed above, the ’630 patent does not describe the “required control data required to create the forwarding path” that characterizes a control packet, does not describe the “forwarding path” that data packets “do not leave,” does not preclude the forwarding path from including the common processor to which control packets are routed, does not describe how the forwarding path is determined, does not describe the processing of control packets that takes place at the common processor (except for marking the packets), does not describe a mechanism for distinguishing control packets from data packets, and does not preclude marking data packets. Based on the record, to a person of ordinary skill, the meaning of and practical significance of the ’630 patent’s distinction between a “control packet” and a “data packet” beyond the confines of the ’630 patent is not clear. All that can be said, based on ’630 patent’s description, is that the claimed “control packets” have the following characteristics: (1) they are packets that “are to be routed from the different inputs to the common (3) “comprise the required control data to create the required forwarding path 7 and might possibly be adapted.”8 Ex. 1001, 1:13–22. Therefore, we construe a “control packet” to be a packet with these three characteristics.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“4. Conclusion as to Claim 1 Having reviewed the arguments and evidence of record, we are not persuaded that Petitioner has demonstrated that Gouriellec discloses all the limitations of claim 1 for purposes of anticipation because Gouriellec does not explicitly distinguish control packets recited in limitation 1.b from data packets. Instead, Gouriellec describes a classifier that classifies inbound packets based on information in a header having source and destination addresses and port numbers to select traffic flows that are to receive a particular service. Ex. 1005, 4:44–49. Petitioner relies on the unrebutted testimony of Dr. Akl, which we find to be persuasive, for the proposition that a POSITA would have understood that “Gourillec is talking about control packets when its marker changes or ‘marks’ the information in a header.” Pet. 35, Pet. Reply 7 (citing Ex. 1003, Akl. Decl. ¶ 114). As Gouriellec concerns controlling flow of traffic into a node over a” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“construction above. See Section VI herein. Gourillec does not distinguish data packets from control packets, as those terms are used in the ’630 patent. Gouriellec discloses packets routed according to the MPLS protocol, i.e., a protocol that provides connection-oriented services that enable tunneling across a wide area network, on a pre-configured label switched path. Ex. 1005, 1:22–38. “A label switched path is a path through an MPLS network so that when a label is applied, traffic transits multiple routers in the LSP.” Id. at 1:30–32. In MPLS, a packet is assigned to an FEC just once as a short fixed length “label.” See Ex. 1008, 4–6. Although there is no further analysis of a packet’s network layer header, the label is used as an index into a table which specifies a next hop and a new label that replaces the old label. Ex. 1005, 1:39–45; Ex. 1008, 4–6. Thus, the packet contains the information required to create a forwarding path. As the packet is routed at least to a switch capable of doing label lookup and replacement, i.e., capable of processing, all the criteria of a control packet under our construction are met, i.e., the packets in Gouriellec are (1) packets that “are to be routed from the different inputs to the common processor;” (2) “in order to be processed by this common processor,” and (3) “comprise the required control data to create the required forwarding path and might possibly be adapted.” Given this understanding of “control packets” in Gouriellec, we now return to the last feature of the “marking” limitation, i.e., that all the marked packets must be “control packets.” See Section VI.A. herein. Petitioner has set forth evidence that Gouriellec’s marker sets or resets DiffServ codepoints (DCSP fields) that are in packet headers. See, e.g., Ex. 1005, 4:61–62; the MPLS protocol (see, e.g., Ex. 1005, 1:22–38), which means that the headers of all packets in Gouriellec include forwarding path information. See, e.g., Ex. 1008, 4–6. This supports Dr. Akl’s unrebutted testimony that a POSITA would have understood that “Gouriellec is talking about control packets when its marker changes or ‘marks’ the information in the header.” Ex. 1003, Akl Decl. ¶ 114. Thus, based on the complete trial record, we are persuaded that Gouriellec teaches or at least suggests that all marked packets are “control packets,” as that term is understood in the ’630 patent. We note that Patent Owner’s arguments to the contrary are not supported by any evidence or testimony that undermines Petitioner’s persuasive showing.” slip op. at 25
Patent outcomesUS 7,551,630 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,551,630 - Netgear, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00516 · APJ Thu A Dang · IPR · Final written decision
Claims 1–3 are unpatentable as anticipated by Li, and claim 10 is unpatentable as obvious over Li and Perahia; the Board did not reach the other grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration of Dr. Akl, Petitioner contends that a person of ordinary skill in the art (POSITA) at the time of the invention of the ’096 patent would have had “a Bachelor’s degree in electrical engineering (or a similar degree) and 2–3 years working in the design or 4 U.S. Patent No. 8,014,366 B2, issued September 6, 2011, filed August 13, 2004 (Ex. 1006, “Wax”). development of wireless communication systems, or the equivalent,” wherein “[a]dditional education could substitute for professional experience, and vice versa, significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1003 ¶ 19). Patent Owner does not offer a definition for a POSITA. See PO Resp. 2. We adopt and apply Petitioner’s proposed definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’096 patent, the asserted prior art, and the testimony of Dr. Akl. We note that the applied prior art comports with this level of skill. See Okajima, 261 F.3d at 1355.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner
“Phillips requires us to consider the prosecution history of a patent in construing the claims. Phillips, 415 F.2d at 1317. But Phillips also cautions that the prosecution history often is “less useful” than the specification: [L]ike the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. Id. Any ambiguity in the prosecution history makes it less relevant to claim construction. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002) (“It is inappropriate to limit a broad definition of a claim term based on prosecution history that is itself ambiguous.”); Northern Telecom Ltd. v. Samsung Elec. Co., Ltd., 215 F.3d 1281, 1295 (Fed. Cir. 2000) (“[C]onfusing statements in the prosecution history simply fail to overcome the ordinary meaning of the [disputed] limitation.”). Furthermore, the Federal Circuit has made it clear that disavowal of claim scope by a patentee requires “expressions of manifest exclusion or restriction.” Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009). More specifically, “[t]o operate as a disclaimer, the statement in the prosecution history must be clear and unambiguous, and constitute a clear disavowal of scope.” Continental Circuits LLC v. Intel Corp., 915 F.3d 788, 798 (Fed. Cir 2019). We do not see in the ’096 patent prosecution history any clear and unambiguous waiver of “offset” timings for the claimed channel estimations “over said pilot interval.” See Ex. 1002, 126–128, 157, 174. This is evident from the office actions themselves and their context in the prosecution history, which we review below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In sum, for the reasons given, we do not agree with Patent Owner’s proposed construction for “over said pilot interval.” PO Resp. 4. We determine the term “said pilot interval” in the phrase “estimating [first/second] radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to have at least some overlap in timing. Id. Instead, we conclude the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. We do not provide any further constructions for “pilot interval” or any other claim terms. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“B. Principles of Law To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). It is proper to take into account not only the literal and “specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly & Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 17
Patent outcomesUS 7,512,096 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,512,096 - Samsung Electronics Co. Ltd. v. Ward Participations B.V.All claims unpatentablePTAB · Apr 21, 2023 · PGR2022-00007 · APJ Thu A Dang · PGR · Final written decision
Claims 1–19 are unpatentable: they lack written-description support, and the asserted combinations of Ellison and Muir, with Al-Salqan or Searle for dependent claims, render them obvious.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“specific, and must be determined on a case-by-case basis. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test for sufficiency of support is whether the disclosure of the application relied upon “reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.” Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations,” wherein, “[w]hile the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That is, “it is the specification itself that must demonstrate possession” and “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad Pharm., 598 F.3d at 1351 (“[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“vi. Proposed Combination of Ellison and Muir Petitioner contends that Ellison discloses “an isolated execution architecture that improves security in a computer system or platform by implementing several levels of hierarchy and normal and isolation execution modes for the operating system and processor.” Pet. 46–47 (citing Ex. 1006, 1:12–15, 2:40–61, Fig. 1). Although Petitioner acknowledges that Ellison “does not reveal details of [] a system or transaction between multiple parties,” Petitioner relies on Muir for such teaching. Id. at 47. According to Petitioner, a POSITA looking to implement Ellison’s isolated execution architecture in a computer with multiple devices “would have looked to Muir’s teachings to implement a secure electronic transaction between two parties,” because “both Ellison and Muir are related to providing improved security for transactions involving keys using cryptographic techniques.” Id. at 48 (citing Ex. 1006, 1:38–51; Ex. 1008, 7, 8, 11; Ex. 1003 ¶ 66). We agree with Petitioner’s motivation to combine the teachings of Ellison and Muir, as supported by Dr. Black’s testimony (Pet. 46–51 (citing Ex. 1003 ¶¶ 64–71), and find unavailing Patent Owner’s contention that “a POSITA would not have looked to Muir to cure the deficiencies of Ellison.” PO Resp. 39. Although Patent Owner contends that “Petitioner fails to show with particularity the why and how required for its obviousness combinations” (PO Resp. 68), we agree with Petitioner’s contention that, in the combination of Ellison and Muir, “each device involved in a transaction would have been connected through a computer network such as Mui’s included Ellison’s isolated execution architecture and one or more parts of Muir’s system.” Pet. 48. We credit the testimony of Dr. Black as sufficient support for Petitioner’s contention, when he explains, “a POSITA would have viewed extension of Ellison’s system to include the multi-party transactions described by Muir to have been a natural and obvious extension,” wherein a “a POSITA would have been motivated to enable such multi-party transaction [] in Ellison’s system to increase the functionality and usefulness of Ellison’s system.” See Ex. 1003 ¶ 69. Thus, we find unavailing Patent Owner’s contention that Petitioner “has not established its prima facie case.” PO Resp. 68.” slip op. at 44
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find unavailing Patent Owner’s contention which is directed to Ellison alone, and not to the combination of Ellison and Muir proposed by Petitioner. See PO Resp. 47. We agree with Petitioner’s contention that Ellison’s private key 204 “can be used ‘to encrypt a digest of a message producing a signature” (see Ex. 1006, 60–65 (“In the digital signature generation process, the protected private key 204 is used as an encryption key to encrypt a digest of a message producing a signature”)), wherein “Muir clearly discloses using a digital signature for transactions between two parties.” Pet. Reply 25 (citing Ex. 1006, 8:59–65; Ex. 1008, 2, 3, 6, 9, 10, 12, 18; Ex. 1032 ¶ 29). Thus, contrary to Patent Owner’s contention, we agree with Petitioner’s position regarding the combination of Ellison and Muir for teaching that “private key 204” is “for the protection of digital transactions involving two parties.” PO Resp. 47. Based on the complete record presented, we determine Petitioner has demonstrated sufficiently that a POSITA would have been motivated to combine Ellison and Muir, wherein the combination of Ellison and Muir teaches “providing a private key in a memory of said electronic device,” the device,” the private key being “inaccessible to a user of said electronic device,” and “encrypted when the private key is stored in said memory,” as recited in claim 1.” slip op. at 36
Patent outcomesUS 10,992,480 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,992,480 - Solaredge Technologies Ltd. v. Koolbridge Solar, Inc.All claims unpatentablePTAB · Apr 17, 2023 · IPR2022-00007 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–13 and 20 are unpatentable: claims 1–3 and 8–10 over Tracy, claims 4 and 11 over Tracy and Fujimoto, claims 6 and 20 over Tracy and De, claim 7 over Tracy and Bond, and …
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In the Decision to Institute we declined to treat any of the claim terms as mean-plus-function terms because the terms have an ordinary and customary meaning. Dec. to Inst. 14–15. Neither party has proposed any other claim constructions. We apply the plain and ordinary meaning in this Decision.” slip op. at 7
- Expert testimonyPetitioner expert creditedOther
“Dr. Baker’s testimony is persuasive evidence that Tracy discloses the claimed floating DC power source, as Tracy’s terminals are not permanently connected to the neutral.” slip op. at 24
- Skill levelOther
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner that Patent Owner unrealistically reads this definition to mean there can never be a connection to ground or neutral, because Patent Owner ignores the disclosure in the ’822 patent of temporarily connecting one or the other of the floating DC sources to neutral, as discussed above. Id. at 9–10 (citing Ex. 1001, 3:52–60, 4:27–40, 10:44–47, 11:1–7, 11:25–28, 23:47–52; Ex. 1074, Baker Reply Decl. ¶¶ 12–13).” slip op. at 20
Patent outcomesUS 8,937,822 unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,937,822 - PTAB · Nov 29, 2022 · IPR2022-01067 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1–4, 8, 10–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“. . . the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure, 3 (footnote omitted; citing Sotera). In other words, under the Interim Procedure, a petitioner may avoid discretionary denial of the petition based on a parallel district court litigation by providing a Sotera-style stipulation. The Interim Procedure does not, however, make a Sotera-style stipulation a prerequisite for institution. Under our informative precedent, an inter partes review may be instituted despite the absence of a Sotera-style stipulation. Sand Revolution at 12 n.5 (instituting inter partes review notwithstanding the absence of a stipulation not pursue any ground that could have been reasonably raised in an inter partes review). We find that Petitioner’s stipulation (Ex. 1018) is the same as the one in Sand Revolution, where the petitioner stipulated that, if the IPR is instituted, the petitioner will not pursue the same grounds in the district court litigation. Sand Revolution at 11–12. In that case, the panel held that petitioner’s stipulation “mitigates to some degree the concerns of duplicative efforts between the district court and the Board as well as concerns of potentially conflicting decisions” and that Fintiv factor 4 “weighs marginally in favor of not exercising discretion to deny institution.” Id. at 12.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the information presented in the Petition and the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing that at least one of the challenged claims is unpatentable, and we do not exercise our discretion to deny institution. Therefore, we grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a Master’s degree in electrical engineering or an equivalent field and two years of academic or industry experience working with error correction in memory devices.” Pet. 14 (citing Ex. 1002 ¶ 19). For purposes of the preliminary response, Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 18. For purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“what it means to “partially decode.” Prelim. Resp. 14–15. We disagree. Although the sentence describes the function of a decoder module, it does not describe what it means to decode (or partially decode) encoded data. We decline to adopt Patent Owner’s proposed construction because it replaces the claim language “decode the received encoded data to generate a plurality of partially decoded data streams” with a sentence from the Specification that does not describe “decod[ing]” or “partially decoded.” Patent Owner’s proposed construction fails to capture the meanings of these words. Instead, it merely replaces the claim term “decode” with the broader term “process.” We agree with Patent Owner, however, that “decode” requires more than just buffering. The Specification twice mentions buffering. Ex. 1001, 6:11–14 (quoted above); id. at 6:46–50 (“[E]ncoded data may be read from a set of one or more of sectors . . . by a decoder sub-module . . . and processed (e.g., buffered, de-interleaved, decoded to some extent, etc.) to generate a data stream.”) In each instance, buffering is disclosed along with de-interleaving and decoding as actions performed by a decoder module or submodule. Nowhere does the Specification define “decode” to mean “buffer” or “de-interleave.” Patent Owner does not dispute the portion of Petitioner’s construction that defines “decode” to mean “distinguish error correction bits from information bits.” Pet. 14–15. Both parties rely on Patent Owner’s district court infringement contentions, where Patent Owner asserted that the disputed claim limitation is met by the accused products in part because “[a]t a minimum, the ECC bits will be identified, distinguished from, and Resp. 15.7 Neither party directs us to intrinsic evidence to support this definition of “decode.” Nevertheless, because this portion of Petitioner’s proposed construction is undisputed at this stage of the proceeding, we adopt it for purposes of our Decision. Accordingly, we construe the phrase “decode the received encoded data” to mean “distinguish error correction bits from information bits in the received encoded data.” Although the term may not be limited to this meaning, no other acceptable definition has been presented on this record. At this stage of the proceeding, we do not construe the phrase “to generate a plurality of partially decoded data streams” because neither party has proposed a construction for that portion of the claim language.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Nov 16, 2022 · IPR2021-00768 · APJ Thu A Dang · IPR · Final written decision
Claims 17–19, 21–23, 25, and 26 are unpatentable: Passint anticipates claims 17, 18, 21, and 22; Passint and Chen render claims 19, 21, and 23 obvious; Dally renders claims 17, 18, 21, and 22 obvious …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that a person of ordinary skill in the art (“POSITA”) related to the ’998 patent would have “at least a master’s degree in computer science or electrical engineering in the field of computer networking,” wherein “[a]dditional graduate education could substitute for professional experience, or significant experience in the field of computer networking could substitute for formal education.” Pet. 16–17 (citing Ex. 1003 ¶ 33).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“FIG. 4.” Pet. Reply 7. That is, even if “the parties do not dispute that Figure 1 applies to the Passint invention as a whole” (PO Sur-Reply 15), Petitioner has met its burden of establishing anticipation if it shows that each and every element in claim 17 is found in the single embodiment set forth in Figure 4 of Passint. Thus, although Patent Owner argues that “Petitioner never explains why Passint’s nodes 22, 24, and 26 are alleged to be router cluster nodes in a cluster router” (id.), Petitioner nevertheless can establish anticipation by showing that Figure 4 of Passint discloses router cluster nodes in a cluster router, as recited in claim 17. As Petitioner persuasively points out, contrary to Patent Owner’s contention, “the Petition does not cite Passint’s FIG. 1 as disclosing the ‘router cluster node,’” but rather, “specifically refers to Passint’s router chips 50/150 as disclosing the ‘router cluster node’ of the ‘router cluster’ of Passint’s FIG. 4.” Pet. Reply 12.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“view of Chen renders the limitations as recited in claims 19, 21, and 23 as obvious, contending that it would have been obvious to combine the references and citing Dr. Weissman’s testimony for support. Pet. 37–46 (citing Ex. 1004, 5:52–58, 11:9–16, 12:1–4, 12:39–43, 13:21–28; Ex. 1008, 6, 7, 13; Ex. 1003 ¶¶ 116–136).” slip op. at 22
Patent outcomesUS 7,483,998 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,483,998 - PTAB · Oct 5, 2022 · IPR2022-00516 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–3 and 10 on all five grounds: anticipation by Perahia, Li, or Wax, and obviousness over Li or Wax with Perahia.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that “estimating a second radio channel . . . over said pilot interval” requires that the second radio channel be estimated over the same pilot interval as estimating a first radio channel was performed. See Prelim. Resp. 7. Nevertheless, given that a pilot interval is “predetermined time period . . . for supervisory purposes” (Ex. 1001, 7:41–53), we find that the time for estimating the first and second radio channels need not be exactly co-extensive in order to meet the “same pilot interval” limitation. For example, the pilot interval could be a longer predetermined period of time encompassing (1) the beginning and ending of estimating the first radio channel, then (2) some other activity such as “control, equalization, continuity, synchronization, or reference,” and then (3) the beginning and ending of estimating the second radio channel—so long as all of these are activities are for supervisory purposes. This comports with the Specification of the ’096 patent, which merely mentions “pilot interval” as the period of time over which the SMDA module estimates the first and second radio channels from the access point to the respective first and second mobile stations. That is, the Specification of the ’096 patent does not limit “pilot interval” to a time period for simultaneous and co-extensive estimation of first and second radio channels, as Patent Owner appears to be advocating. Therefore, for the foregoing reasons, based on the present record, we determine the term “said pilot interval” in the phrase “estimating a second radio channel . . . over said pilot interval” recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Instead, the “pilot interval” could be a longer predetermined supervisory period that encompasses non-simultaneous estimating of the first and second radio channels. The parties are invited to address this claim construction issue during trial.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we do not agree with Patent Owner’s contention that, because Perahia discloses transmitting first channel training information “in a first channel training period,” and allowing transmission of second channel training information “during a second channel training period,” Perahia fails to show that the estimating of a second radio channel takes place over the same interval over which the estimating of the first radio channel occurred. Prelim. Resp. 6–7. As discussed above, “over said pilot interval” as recited in claim 1 does not require the time for estimating the first and second radio channels to be co-extensive. Relying on Dr. Akl’s testimony, Petitioner contends that Perahia transmits channel training information in a “‘channel training period’— which is a pilot interval.” Pet. 23 (citing Ex. 1004, 3:4–12; Ex. 1003 ¶ 87). Dr. Akl testified that, like the ’096 patent, Perahia discloses channel estimation. Ex. 1003 ¶¶ 84–85. According to Dr. Akl, Perahia incorporates U.S. Patent No. 7,352,688 (Ex. 1008) by reference, which discloses antenna elements 1 and 2, wherein “[d]uring a first portion of the channel training period, one antenna element transmits a guard interval 504 followed by two long symbols 506 while the other antenna element is quiet,” and “[t]hen the first element goes into a quiet period.” See Ex. 1003 ¶ 87 (citing Ex. 1004, 8:61–64, 9:4–5, 9:29–30, Figs. 7–8; Ex. 1008, 6:26–45). That is, Dr. Akl testified that Perahia discloses a “pilot interval” that includes a “first portion” for estimating a first channel and another portion for estimating a second channel in a channel training period. Id. (emphasis added). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Perahia discloses “estimating a first radio channel from said access point to said first mobile station over a pilot interval,” and “estimating a second radio channel from said access point to said second mobile station over said pilot interval,” as recited in claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Having reviewed Petitioner’s arguments and supporting evidence in the present record, we are preliminarily persuaded by Petitioner’s contention that a POSITA would have found it obvious to combine the teachings of Li and Perahia for enhancing throughput through the use of SDMA, as testified by Dr. Akl. Pet. 38 (citing Ex. 1003 ¶¶ 110, 113). Accordingly, we determine Petitioner has made a sufficient showing that the combination of Li and Perahia teaches the subject matter of dependent claim 10.” slip op. at 30
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted on all grounds and on all claims challenged in the Petition, i.e., as to claims 1–3 and 10 of the ’096 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Perahia; 2) claims 1–3 are unpatentable under 35 U.S.C. § 102 as anticipated by Li; 3) claim 10 is unpatentable under 35 U.S.C. § 103 as obvious over Li and Perahia;” slip op. at 39
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,512,096 - Juniper Networks, Inc. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Aug 16, 2022 · IPR2021-00538 · APJ Thu A Dang · IPR · Final written decision
Claims 1–7, 13, 15–19, 21–25, 31, and 33–38 were held unpatentable as anticipated by or obvious over Lewis; claims 3, 4, 6, 23, and 24 were also obvious over Lewis and Shankar.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). Relying on the declaration of Dr. Weissman, Petitioner contends that A [person of ordinary skill] in the art related to the ’140 patent would possess a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field (or its equivalent), plus at least two years of experience working in networking environments, including at least some 1 U.S. Patent Application Publication No. 2004/0004955 A1, published January 8, 2004, filed March 18, 2003 (Ex. 1004, “Lewis”). 2 U.S. Patent Application Publication No. 2003/0174706 A1, published September 18, 2003, filed March 4, 2003 (Ex. 1005, “Shankar”). experience with networking protocols and network routing. Additional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education. Pet. 18 (citing Ex. 1003 ¶33). Patent Owner replies that it “does not offer a competing definition,” because “Petitioner would still not meet its burden to prove unpatentability of any challenged claim.” PO Resp. 4. We adopt and apply Petitioner’s definition of a person of ordinary” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner points out that “neither party has proposed claim constructions for the ’140 patent in the co-pending district court litigation,” and thus contends that “no construction for these terms is necessary because the claims encompass the prior-art mappings under any construction consistent with Phillips.” Pet. 19. Patent Owner does not propose any claim construction. See PO Resp. 4–5. We determine that it is unnecessary to construe any claim term expressly to resolve the disputed issues before us. To the extent the parties’ arguments about whether the prior art teaches the claimed subject implicate issues of claim interpretation, those matters are addressed in our merits analysis below. 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 6
- BurdenUnpatentable
“1. Principles of Law Petitioner bears the burden of establishing the unpatentability of any claim by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). There is no requirement that the prior art must use the same words to describe a claim element in order to teach or disclose that claim element. Identity of terminology is not required for a claim element to be anticipated by the prior art without resort to obviousness. See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Even in a nonobviousness setting, it is proper to take into account not only the literal and specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). For anticipation, the dispositive question is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference. Eli Lilly and Co. v. Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 7
Patent outcomesUS 7,596,140 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,596,140 - Dell Technologies Inc. / Dell Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentAll claims unpatentablePTAB · Jun 27, 2022 · IPR2021-00272 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–3, 5–9, 11–17, 19, and 20 are anticipated by Narayanan; all claims are also held obvious on the grounds stated.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedOther
“Patent Owner acknowledges that Narayanan discloses executing a spanning tree protocol, but contends that “there is no disclosure in Narayanan of the required initiating a spanning tree protocol in one or more of the first set of port interfaces.” PO Resp. 11–12 (emphasis omitted in part). Patent Owner’s argument is unavailing. We agree with Petitioner that, when taking over the active role, Narayanan’s Slave Chassis initializes and begins running bridging and routing protocols, such as the STP. See Reply 10 (citing Ex. 1005, 7:48–59, 5:12–15). Here, Petitioner cites its expert’s unrebutted testimony that the STP would be initiated specifically for the port interfaces that were reconfigured. Id. (citing Ex. 1004, Bambos Decl. ¶ 101). Petitioner also notes the similarity between the Narayanan’s teachings and the disclosure in the ’489 patent that, when an aggregation switch recognizes a connection failure of the VFL, it reconfigures its set of member ports into at least one link aggregate coupled to the edge node and enables a spanning tree protocol or other similar network protocol for alleviating packet loops on the link aggregate. Id. (citing Ex. 1001, 19:11–18).” slip op. at 23
- Skill levelOther
“1. Introduction The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 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”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).” slip op. at 28
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Having reviewed the evidence and arguments of record, we agree with Petitioner that “a connection failure of the virtual fiber link to the remote aggregation switch,” as recited claim limitation [1.D], is not limited solely to failures of the VFL itself. We find that Petitioner has demonstrated that Narayanan discloses this limitation because in Narayanan processing module 216 is configurable to determine VSL 136 fails when it stops receiving communications from switch 110.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“2. Apparatus Claims 1–3, 5–9, and 11–14 Petitioner notes that Narayanan incorporates Smith and Chin by reference. Pet. 43 (citing Ex. 10056, 4:12–15, 5:33–37). Petitioner argues that, to the extent we do not consider Smith and Chin to be part of Narayanan’s disclosure, in view of Narayanan’s explicit reference to Smith and Chin, a person of ordinary skill would have had reason to combine their teachings with those of Narayanan. Id. Petitioner notes that Narayanan cites Smith as providing details for a suitable design of switch 132, including components such as forwarding engines, filtering databases, and spanning tree engines. Id. (citing Ex. 10057, 4:17–18). Petitioner also notes Narayanan’s explanation that Chin discloses details of an illustrative embodiment of PAgP as run by link aggregations engines 222 and 310 disposed in virtual switch 132 and access switches 105, 106. Id. (citing Ex. 10058, 5:32–39). Having reviewed the evidence and arguments of record, we are persuaded that Petitioner has demonstrated a person of 6 The Petition cites Ex. 1004, but it is clear from the context Petitioner means tocite Ex. 1005. 7 Ibid. 8 Ibid. ordinary skill would have had reason to combine the teachings of Smith and Chin with those of Narayanan.” slip op. at 29
Patent outcomesUS 8,913,489 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,913,489
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.