• Vudu, LLC v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01688 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 3, 4, 6, 8, 11, 13, 15, 18, 19, 21, and 23 are unpatentable over DIS 23009-1; the revised contingent motion to amend is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 18–19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor 6 Patent Owner does not present objective evidence of nonobviousness. does it present its own definition. We adopt Petitioner’s definition as it is consistent with the specification of the ’830 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” “SegmentBase,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in its briefing. We need not construe any claim term to resolve any issues before us, and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied

    “not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely because paragraph 253 uses the term “[h]ereinafter” before it discloses “two simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited 8 Ex. 2005 is Application No. 16/168,933 (“the ’933 application”). in limitations [38.6], [40.6], and [46.6]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicates a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. MTA 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 38, 40, and 46 do not find sufficient written description support in the ’644 application nor in the ’933 application, whether considered individually or collectively, and thus, these claims contain new matter.” slip op. at 35

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

    “rationale for combining DIS 23009-1 with M20060, Petitioner persuasively contends that: A POSA would have been motivated to add the additional “metadata” described in M20060 to the MPDs described in the DIS 23001-6 or DIS 23009-1 references in order to enable the client to choose the most suitable version of media content among alternative versions of media content. For example, M20060 describes that the additional metadata (e.g., the extended accessibility element and the usedWith, equivalentTo, bitDepth, minBitDepth, and maxBitDepth attributes) helps “both users and clients to select appropriate representations” by, for example, “1) supporting accessibility, 2) describing relationships of representations, and 3) describing media’s bit depth.” Moreover, a POSA would have had an expectation of success in modifying the MPDs in DIS 23001-6 or DIS 23009-1 to include the additional metadata described below because it simply would have been a matter of adding additional metadata to the MPD XML schemas described in DIS 23001-6 or DIS 23009-1. Id. (citing Ex. 1094 ¶ 33; Ex. 1097 § 1, 1). Dr. Bestavros persuasively explains that “M20060 expressly references the DIS 23001-6 reference and proposes specific modifications to the MPEG DASH metadata included in the MPD XML schema.” Ex. 1094 ¶ 34 (citing Ex. 1097 § 1, 1 (introduction of M20060); Ex. 1097, 7 (references cited by M20060)).” slip op. at 41

  Patent outcomesUS 10,270,830 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,270,830
• Vudu, Inc. v. Ideahub, Inc.All claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01689 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 11, 25, 27, and 29 are unpatentable as anticipated by and obvious over DIS 23009-1; the revised contingent motion to amend proposing claims 31–35 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level Of Ordinary Skill In The Art Petitioner contends that: A person of ordinary skill in the art (“POSA”) in the relevant field as of the earliest priority date would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject and two or more years of experience in the field of media streaming over the Internet. Pet. 19 (citing Ex. 1003 ¶ 82). Patent Owner does not dispute Petitioner’s assertions regarding the level of ordinary skill in the art, nor does it present its own definition in any of its briefing. We adopt Petitioner’s definition as it is consistent with the Specification of the ’414 patent and the cited references.” slip op. at 10

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

    “Petitioner proposes that we construe “adaptation set,” and “SegmentTemplate.” Pet. 19–21. Patent Owner does not address claim construction in any of its briefing. 6 Patent Owner does not present objective evidence of nonobviousness. and therefore, do not expressly define any claim term in our Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable

    “The newly-cited portion in paragraph 232 does not describe additional configuration information nor user characteristic information. Instead, it describes “an additional configuration to select a representation based on a user characteristics and terminal characteristics.” Ex. 2004 ¶ 232. It is unclear from Patent Owner’s argument whether Patent Owner intends for the claimed “user characteristic information” to include or refer to additional configuration information, accessibility features of a representation, or both. Reply Rev. Opp. 1 (citing Ex. 2004 ¶¶ 232, 234, 253). In any event, merely simple attributes [] for the above-described purpose”––and not even in close proximity to the “user characteristics” and “additional configuration” in paragraph 232––is not sufficient to provide support for “the user characteristic information includ[ing] the usedWith attribute and the equivalentTo attribute,” as recited in limitations [31.11], [32.12], and [35.7]. None of the cited portions (i.e., Ex. 2004 ¶¶ 232, 234, 253, 255–257, Table 13; Ex. 2005 ¶¶ 254–256, Table 13) indicate a sufficient connection or relationship, or the claimed inclusive relationship, between user characteristic information and the usedWith and equivalentTo attributes. Contra Reply Opp. Rev. 1 (Patent Owner arguing that the cited disclosures “clearly show this relationship between the claimed attributes and user characteristic information”). For the foregoing reasons, we determine that claims 31, 32, and 35 do not have sufficient written description support in the ’644 application and the ’092 application, either individually or collectively, and as such, contain new matter.” slip op. at 29

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “are not entitled to a priority date earlier than March 16, 2012 (the filing date of PCT ’922), because the disclosure of KR10-2011-0023271 does not support at least the limitations of: “the adaptation set includes one or more attributes or elements that are common to each of the representations for that adaptation set,” as recited in independent claims 1 and 11, and the “SegmentTemplate” recited in independent claims 25. Patent Owner has not asserted, after institution, that the challenged claims are entitled to an earlier date. See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–28 (Fed. Cir. 2008) (indicating that patent owner bears a burden of production in arguing that the asserted references are not prior art based on entitlement to an earlier priority date). As such and for the reasons discussed below, Petitioner has persuasively demonstrated that DIS 23001-6, DIS 23009-1, and 3GPP TS 26.247 qualify as prior art to the challenged claims, because Petitioner has sufficiently demonstrated that the references were publicly accessible prior to the applicable priority date of March 16, 2012.” slip op. at 12

  Patent outcomesUS 10,313,414 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,313,414
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Feb 22, 2022 · PGR2021-00108 · APJ Aaron W Moore · PGR · Institution

  Institution was denied because the petition did not show a reasonable likelihood that claims 1–20 were unpatentable, including because the asserted combination did not link rule generation to the packet correlation.

  RulingsInstitution decision

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

    “Obviousness Analysis A 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 the subject matter pertains. See 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, primarily: (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, 383 U.S. at 17–18.6 Petitioner asserts that claims 1–2, 7–8, 10, 12–13, and 17–18 are unpatentable under § 103 as obvious in view of Paxton and Sutton. See Pet. 6, 18–64. For the reasons described below, we are not persuaded by Petitioner’s argument and evidence.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2-3 years of experience in the design or development of telecommunication systems, or the equivalent” and that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 13–15 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’797 patent and the prior art, we adopt it for purposes of this analysis. C.” slip op. at 9

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

    “Patent Owner argues that “[t]he plain and ordinary meaning of the terms “determining . . . a first plurality of log entries” and “determining . . . a second plurality of log entries” is “identifying” or “ascertaining” log entries.” Prelim. Resp. 16. Patent Owner also argues that “[t]he terms “provisioning, . . . based on the determined correlation, . . . rules configured to identify the first plurality of packets received by the network device,” and “provisioning, . . . based on the determined correlation, . . . rules configured to identify the second plurality of packets transmitted by the network device” (“provisioning rules”) . . . should be given their plain and ordinary meaning—rules configured to identify packets.” Prelim. Resp. 20. Neither party, however, argues that the prior art arguments presented in the Petition turn on the construction of these terms. Instead, it appears that they are raised as claim construction issues only because Petitioner is challenging the language under Section 112. We will discuss the Section 112 arguments below, but do not see a dispute about the constructions offered by the parties above the makes a difference in the prior art analysis and, therefore, do not construe these terms at this time. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 10

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

    “respect to this limitation for several reasons, including that Petitioner’s “alleged rule generation and provisioning” is responsive to detecting malicious activity, not “based on the determined correlation.” Prelim. Resp. 38. On this record, we agree with Patent Owner. The claims require “generating, by the computing system and based on the determined correlation, one or more rules configured to identify packets received from the first host.” We do not have sufficient argument or evidence to show that one of ordinary skill in the art would have found it obvious to generate these rules “based on” the determined correlation.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 10,931,797
• Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing granted
  PTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing

  The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9

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

    “E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,874,554
• Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing granted
  PTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing

  The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7

  • Parallel petitionsDecided for petitioner

    “B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9

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

    “We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,874,554
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.Institution denied
  PTAB · Jan 24, 2022 · IPR2021-01154 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution for claims 1–27 because Petitioner did not show a reasonable likelihood that either asserted Jungck-based obviousness combination rendered the claims unpatentable.

  RulingsInstitution decision

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

    “c. Summary of Claim 1 In sum, Petitioner does not explain how the edge cache devices contribute or detract from Jungck’s ability to teach or suggest the “entire boundary” and “all traffic” limitations of the challenged claims. The evidence of device 900 and claims of collateral estoppel do not remedy this deficiency. In the absence of such evidence, Petitioner has failed to “identif[y], in writing and with particularity, . . . the evidence that supports the grounds for the challenge.” See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)); 37 C.F.R. § 42.104(b). For the reasons above, Petitioner has not shown sufficiently that the combination of Jungck and Wood meets the limitation of “[a] method of filtering packets at a packet security gateway, of a plurality of packet security gateways that collectively provide an entire interface across a boundary of a network protected by the packet security gateway . . . comprising: a first set of packet filtering rules to be applied to all network traffic traversing the boundary.”” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the Petition’s avoidance of the operation of edge caches when edge caches are important in the processing of traffic flowing across the boundary undermines this ground of the Petition. If Petitioner wished to rely on an embodiment or configuration in which the edge caches were irrelevant, the edge caches were redundant to the edge server, or the edge caches were unnecessary, it was incumbent upon Petitioner to explain sufficiently how and why that was the case. Petitioner was aware of the edge caches because it appears to have omitted all references to them in the Petition yet did not explain why this was done. Additionally, although Petitioner’s declarant does include references to edge caches, its declarant also does not explain sufficiently the relevance of those edge caches. Ex. 1004 ¶¶ 148, 212, 214, 215, 227, 323. Additionally, Petitioner’s references to collateral estoppel do not relieve Petitioner from the burden to describe its contentions regarding obviousness in the Petition.” slip op. at 15

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Our reviewing court has held that “[c]ollateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.” Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351–1352 (Fed. Cir. 2018) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)). “It is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.” MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018) (citations omitted); Webpower, Inc. v. WAG ACQUISITION, LLC, Case IPR2016- 01239, Paper 21 at 26–28 (PTAB Dec. 26, 2017). “Issue preclusion [i.e., collateral estoppel] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). Patent Owner points out that the claims at issue in IPR2018-01443, 1444, 1513 (“prior IPRs”) did not include the “entire boundary” or “all traffic” limitations. Prelim. Resp. 26–27, 32, 44. We agree. Collateral estoppel does not apply because there are differences between the claim limitation at issue here and the adjudicated claim limitations at issue in the prior IPRs. See In re Freeman, 30 F.3d at 1465; accord MaxLinear, Inc., 880 F.3d at 1377–1378; cf. In re Arunachalam, 709 F. App’x 699, 702 (Fed. Cir. 2017) (unpublished) (finding collateral estoppel applies to an adjudicated claim that is not “materially different” than the adjudicated claims).” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner requests that the preamble of independent claims 1, 8, and 15 be treated as limiting. Prelim. Resp. 16–17. These preambles provide antecedent basis for “packet security gateway,” “boundary,” “network,” and “one or more other networks.” Id. at 16 (citing Ex. 1001, 20:64–21:2, 22:13–18, 23:35–42). The preambles also recite the “plurality of packet security gateways that collectively provide an entire interface across a boundary of a [protected] network,” which is “essential to understand” the “all traffic” limitation in the body of these claims and thus ‘“give life, meaning, and vitality”’ to the claims. Id. (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citation omitted)). The preambles provide the context for the body of the independent claims by defining the arrangement of the “plurality of packet security gateways” relative to the “boundary” of the protected network and thus the basis for applying “packet filtering rules . . . to all network traffic traversing the boundary.” Id. (citing Ex. 1001, 20:64–21:8). The “entire interface” limitation also was relied on during prosecution of the parent ’437 Patent’s claims to distinguish them from the prior art. Id. at 16–17 (citing Ex. 2008, 254–61; Catalina, 289 F.3d at 808–09). Petitioner does not dispute the preambles are limiting. Pet. 18–21, 37. For, the reasons above, we construe the preambles of independent claims 1, 8, and 15 as limiting. After review of the current record, we conclude that, other than determining the preambles are limiting, no express claim construction is necessary to determine whether to institute review of the challenged claims. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,785,266
• Juniper Networks, Inc. v. Correct Transmission, LLCInstitution denied
  PTAB · Nov 19, 2021 · IPR2021-00984 · APJ Bryan F Moore · IPR · Institution

  The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood that the asserted obviousness grounds taught or suggested the claimed responsive fragmentation.

  RulingsInstitution decision

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

    “Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and Reply, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one Challenged Claim of the ’669 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we do not institute an inter partes review of the ’669 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and fewer years of design and development experience. Pet. 5–6 (citing Ex. 1003 ¶¶ 59–63). “Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 37. We regard Petitioner’s proposed definition as reasonable, and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang. Ex. 1003 ¶¶ 59–63.” slip op. at 7

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

    “C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 6 (“Petitioner construes each term as having its ordinary and customary meaning.”); Prelim. Resp. 11 (“Patent Owner does not propose any claim term departs from its ordinary and customary meaning.”). We do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); 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 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “While not showing a teaching away, the above statement in Sourani contrasting stop points and fragmentation does show that one of ordinary skill in the art reading Sourani would know that the stop points in Sourani are not intended to be fragments. Petitioner has not explained sufficiently why, despite this contrast, one of ordinary skill would use fragmentation with the system of Sourani.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 6,876,669
• Apple Inc. v. Corephotonics, Ltd.All claims unpatentable
  PTAB · Nov 4, 2021 · IPR2020-00860 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious over the combinations of Golan and Martin, with additional references applied to specific dependent claims.

  RulingsFinal written decision

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

    “For the foregoing reasons, we are persuaded that Petitioner’s rationale” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “Petitioner’s copying of the ’942 patent’s technologies from Patent Owner also supports [the] conclusion” of nonobviousness. Id. at 54 (citing Ex. 2015 ¶ 134). Patent Owner presents arguments with respect to the failure of Golan and Border inventors to achieve what is disclosed by the ’942 patent. Id. at 40–41. Patent Owner also asserts: “That Petitioner copied the invention of the ’942 patent (among other Corephotonics technologies, which Petitioner also appears to have copied) is strongly implied by the course of conduct between the parties and the timing of Petitioner’s announcement of their own version of ‘smooth transition’ in their iPhone 7 series in Fall of 2016.” Id. at 56–57 (citing Ex. 2015 ¶ 139).” slip op. at 46

  • ExcludeMotion to exclude, deniedDenied

    “IV. MOTION TO EXCLUDE Petitioner objected to Patent Owner’s inclusion of Exhibits 2101,” slip op. at 79

  Patent outcomesUS 10,326,942 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,326,942
• Apple Inc. v. Corephotonics, Ltd.Rehearing granted
  PTAB · Nov 4, 2021 · IPR2020-00487 · APJ Monica S Ullagaddi · IPR · Rehearing

  Claims 1–18 are unpatentable under §103: claims 1–4, 7, 10–13, and 16 over Golan and Martin; the remaining claims over combinations adding Ahiska, Levey, or Parulski.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “We initially concluded that Petitioner failed to establish a reasonable likelihood of prevailing in demonstrating that the challenged claims are unpatentable. Paper 9 (“Decision Denying Institution” or “DDI”). Specifically, we concluded that Petitioner’s rationale for combining Golan and Martin was not sufficiently supported by a rational underpinning. Dec. 26 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Accordingly, we declined to institute trial on the challenged claims of the ’233 patent. Id. Petitioner filed a request for rehearing (Paper 10, “Rehearing Request” or “Reh’g Req.”) of our Decision Denying Institution. We granted that request and instituted trial (Paper 13, “Institution Decision” or “Inst. Dec.”) on all challenged claims on all grounds set forth in the Petition. Patent Owner filed a Response (Paper 16, “Patent Owner Response” or “PO. Resp.”).1 Petitioner filed a Reply (Paper 25, “Petitioner’s Reply” or “Pet.” slip op. at 2

  • Expert testimonyOther

    “Dr. Durand testifies that “a POSITA would have understood that Martin’s teachings of critical alignment for stable transition between images of different points of view apply to electronic camera systems providing continuous zoom video output [i]mages as taught in Golan, regardless of whether a three dimensional illusion is provided.” Ex. 1003 ¶ 59. Citing Ahiska (Ex. 1007), Border (Ex. 1009), Orimoto (Ex. 1014), and Hansen (Ex. 1019) to support his testimony, Durand further testifies that It was well known in the art that for seamless transition between two images of different points of views in continuous zoom video applications, when calibration between two cameras (e.g., the electronic calibration of Golan) is not sufficient alone (e.g., because of shocking, vibration, thermal variation, etc.), image registration of two images from two imaging sections for position matching (e.g., critical alignment of Martin) may be used. Id. ¶ 57 (citing Ex. 1007, 4:58–62, 10:2–5; Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex. 1009 ¶¶ 41, 42). The portion of Hansen (Ex. 1019) cited by Dr. Durand addresses how extrinsic calibration errors occur and “a method to recalibrate extrinsic parameters online to correct drift or bias.” Ex. 1019, 1059 (emphasis omitted). Orimoto discloses how misalignment occurs, irrespective of “how exactly the dual lens camera has been conditioned and adjusted by the manufacturer.” Ex. 1014, 1:63–2:1. Border addresses image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. And Ahiska disclose image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the [wide-angle] master and slave cameras is insufficient alone, image registration or matching can be carried out,” “transition[ing] between the master view and the slave view as seamlessly as possible to create the quality of a continuous zoom function”). Petitioner’s third and fourth reasons for combining Golan and Martin are supported by Dr. Durand’s testimony quoted above, which is in turn supported by Ahiska and Border. The portions of Border cited by Dr. Durand address image registration as an alternative to correspondence (i.e., calibration). Ex. 1009 ¶¶ 41, 42. The portions of Ahiska cited by Dr. Durand address the additional step of image registration or matching, when calibration is insufficient, to provide a seamless transition between master and slave cameras and “create the quality of a continuous zoom function.” Ex. 1007, 4:58–62, 10:2–5. Thus, each of Border and Ahiska show a relation between electronic calibration and registration. As such, and for the foregoing reasons, we are persuaded that Petitioner’s rationale for combining Golan and Martin is supported by sufficient rational underpinning, based on the entirety of the record developed at trial. See KSR, 550 at 418.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends [A] Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or the equivalent degree in electrical and/or computer engineering or a related field and 2–3 years of experience in imaging systems including optics and image processing. Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand. Ex. 1003 ¶ 17. Patent Owner “adopts Petitioner’s definition of the level of ordinary skill. . . .” PO Resp. 7 (citing Pet. 3; Ex. 2015 ¶¶ 31–33). The level of ordinary skill in the art proposed by Petitioner is consistent with the ’233 patent and the asserted prior art. Where pertinent, we apply Petitioner’s definition in making the findings and conclusions rendered in this Decision.” slip op. at 9

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

    “understood ‘reduce an image jump effect seen in video output images’ to mean “reduce a discontinuous image change in video output images.’” Pet. 6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports this proposed construction. Id. (citing Ex. 1001, 10:30–40). Patent Owner “adopts, for this IPR proceeding only, Petitioner’s proposed construction for the phrase ‘reduce an image jump effect seen in video output images’ and appl[ies] it in [its] analysis herein.” PO Resp. 8 (citing Ex. 2015 ¶¶ 34–36). We do not discern a dispute between the parties regarding this limitation and we need not expressly construe this limitation to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,661,233
• Juniper Networks, Inc. v. Correct Transmission, LLCInstitution denied
  PTAB · Oct 22, 2021 · IPR2021-00814 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution on claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 because neither obviousness ground showed a reasonable likelihood of success.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–3, 6, 7, 9–15, 18–24, 26, 27, and 30–32 of the ’928 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’928 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and one to two years of experience in the design and development of network communication systems. Alternatively, a POSITA would have a Master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and less years of design and development experience. Pet. 7 (citing Ex. 1003 ¶¶ 67–71). Patent Owner does not present an alternative definition at this stage of the proceeding. Prelim. Resp. 30. We regard Petitioner’s proposed definition as reasonable, and” slip op. at 11

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

    “C. Claim Construction Petitioner does not propose any claim terms for construction. Pet. 7 (“For purposes of this proceeding, Petitioner construes each of the ’928 claim terms as having its ordinary and custom[ary] meaning.”). Although, Petitioner does submit that, “[f]or purposes of this IPR only, Petitioner relies on the claim scope positions Patent Owner has advanced in district court for ‘port definer module.’” Pet. 8. Similarly, Patent Owner argues each claim term should have its ordinary and customary meaning, except that, as in the parallel district court proceeding, the function of alleged means-plus-function term “port definer module” should be construed to be “designating any one physical link of the logical link and examining the designated link of the logical link.” Prelim. Resp. 11–12. We note that, in the Preliminary Response, Patent Owner does not appear to identify any structure in the Specification for performing that function. See generally Prelim. Resp. Regardless, we do not find that the express construction of any term is necessary for this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); 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 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner has not explained sufficiently, let alone with particularity, why the skilled artisan, but for hindsight, would have (1) taken Y.1731, which says nothing concerning aggregated physical links with a single logical link to which packets are directed; (2) then turned to the architectural basis for Y.1731, namely “Ethernet specification G.8010/Y.1306”; (3) then turned to standards “IEEE 802.1D, 802.1Q, and 802.3,” which are “account[ed] for” by G.8010/Y.1306, and specifically selected to pursue 802.3 from among those; (4) then, without any reference or indication in Y.1731 itself, turned specifically to standard IEEE 802.3ad within the set of 802.3 standards, and specifically to its disclosure of aggregated physical links with a single logical link; and then (5) upon making all of these connections, understood Y.1731 itself to disclose or teach aggregated physical links with a single logical link, particularly in the context of the Challenged Claims as a whole. See InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the [] patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)) (“To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.”). Although “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton” (KSR, 550 U.S. at 421), the Federal Circuit has observed that “‘the prejudice of hindsight bias’ often overlooks that the ‘genius of invention is often a combination of known elements which in hindsight seems preordained.’” Polaris Industries, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018).” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,768,928

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.