- Palo Alto Networks, Inc. v. Finjan, Inc.Institution deniedPTAB · May 9, 2016 · IPR2016-00145 · APJ Zhenyu Yang · IPR · Institution
Institution was denied for claims 1–5, 8–12, 15–19, 22–26, 29, and 30 because the asserted combinations relied on references published after the claims’ November 6, 1997 priority date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The ’194 patent describes the code scanner sending the Downloadable and the DSP data to the ACL comparator for comparison with the security policy. Ex. 1007, 6:9–12. Petitioner does not argue that the Downloadable and the DSP data must be transmitted independently. In other words, the Downloadable and the DSP data may be transmitted together, that is, with the DSP data attached to the Downloadable. As stated above, we accept Petitioner’s proposed construction of “append/appending” to mean “attach/attaching.” See supra at 5. Thus, we are persuaded by Patent Owner that the ’194 patent provides written description support for both the appending and the transmitting limitations.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“publication, and Ji renders the challenged claims obvious. Pet. 25–60. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Touboul was published on May 22, 1998 (Ex. 1003 (43)), while the ’583 publication was published on July 15, 1999 (Ex. 1005 (43)). Thus, neither qualifies as prior art. We conclude, therefore, that Petitioner has not demonstrated that the combination of Touboul and the ’583 publication, or the combination of Touboul, the ’583 publication, and Ji, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul and the ’583 publication are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition.” slip op. at 8
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,613,926 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01897 · APJ Charles J Boudreau · IPR · Institution
The Board denied institution because Symantec did not show a reasonable likelihood of prevailing: the challenged claims were entitled to the 1997 priority date, making Touboul I and II not prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“requesting inter partes review pursuant to 35 U.S.C. § 311 of claims 1, 2, 5, 6, 10, 11, 14, and 15 of U.S. Patent No. 8,677,494 B2 to Edery et al. (Ex. 1001, “the ’494 patent”). Pet. 1. Finjan, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “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). For the reasons that follow and on this record, we are not persuaded that Petitioner demonstrates a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims on the asserted grounds. Accordingly, we deny Petitioner’s request to institute an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“necessary to provide a written description of a claimed invention as required by 35 U.S.C. § 112 may be incorporated into a patent application by reference, provided that the incorporated reference is a U.S. patent or U.S. patent application publication that does not itself incorporate such “essential material” by reference, by “[e]xpress[ing] a clear intent to incorporate by reference by using the words ‘incorporat(e)’ and ‘reference’” and “[c]learly identify[ing] the referenced patent [or] application.” 37 C.F.R. § 1.57(c), (d). Moreover, the Federal Circuit has explained that “incorporated patents are ‘effectively part of the host [patents] as if [they] were explicitly contained therein.’” X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in original) (quoting Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1329 (Fed. Cir. 2001)). Contrary to Petitioner’s contentions (Pet. 11–15), the “boilerplate language” used in the ’822, ’926, ’086, and ’494 patents, broadly stating without further qualification that the earlier-filed patents are “incorporated by reference,” is sufficient in view of Federal Circuit precedent to incorporate the disclosure of at least the ’780 patent2 into each later-filed patent. See, e.g., Harari v. Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (finding “entire . . . application disclosure was incorporated by the broad and unequivocal language: ‘The disclosures of the two applications are hereby incorporate[d] by reference’”). We agree with Patent Owner that the facts here are distinguishable from those in cases on which Petitioner relies. Prelim. Resp. 23–24. For example, in Zenon, as Patent Owner asserts, there was a lack of continuity of disclosure in a priority chain because the priority references were not incorporated in their entirety, but only with respect to specific portions. Id. On this record, and particularly in view of Petitioner’s statement that the specification of the ’780 patent, among others, describes the “claim elements and features” not otherwise included in the specifications of the ’822, ’926, ’086, and ’494 patents (Pet. 10)—and, thus, does not itself incorporate such “essential material” by reference (see 37 C.F.R. §1.57(d))—we agree with Patent Owner’s conclusion that “each application in the priority chain contains written description support for the challenged claims, and continuity of disclosure exists up to and including the ’494 [p]atent without interruption.” Prelim. Resp. 16.3” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“among others, it contains or is amended to contain a specific reference to the earlier filed application. 35 U.S.C. § 120. Contrary to Petitioner’s assertion that “neither the ’086 patent, nor the ’926 patent, include a priority claim or any reference whatsoever to a number of earlier-filed applications (i.e., the ’194 patent, ’520 patent and ’639 provisional) that are included in the priority chain of the ’494 patent” (Pet. 6), the ’086 and ’926 patents both include priority claims to the ’194 patent and incorporate the ’194 patent by reference in its entirety. Ex. 1002, [63], 1:26–30; Ex. 1003, [63], 1:23–27. Moreover, as Patent Owner points out, the ’520 patent and ’639 provisional are not within the priority chain from the ’494 patent to the ’194 patent, and the failure of the ’926 and ’086 patents to include a priority claim or reference to the ’520 patent and ’639 provisional does not affect the ’494 patent’s entitlement to the benefit of the November 6, 1997 filing date of the ’388 application that matured into the ’194 patent (i.e., Touboul I). Petitioner also argues that the failure of the ’926 and ’086 patents to include a priority claim or any reference to the ’520 patent and ’639 provisional constitutes a break in the priority chain of the ’494 patent. Pet. 17. For purposes of this Decision, however, we need not reach this issue.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“C. Anticipation by and Obviousness over Touboul I and Touboul II On this record and for the reasons stated in Section II.B. above, we are persuaded that claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ’494 patent are entitled at least to the benefit of the November 6, 1997 filing date of the ’388 patent that matured into the ’194 patent, and, accordingly, that neither Touboul I (i.e., the ’194 patent) nor Touboul II, which issued on November 28, 2000, from an application filed December 22, 1997, constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated a reasonable likelihood that it would prevail at trial on any of the asserted grounds. III. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’494 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of those claims on the grounds asserted in the Petition.” slip op. at 15
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 8,677,494 - Symantec Corp. v. Finjan, Inc.Institution deniedPTAB · Feb 26, 2016 · IPR2015-01895 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution because the challenged claims were entitled to the November 6, 1997 filing date, making the asserted references unavailable as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or the combination of Touboul I and Dan, renders the challenged claims obvious. Pet. 32–52. As explained above, the challenged claims are entitled to the benefit of the November 6, 1997 filing date. Thus, neither Touboul I (the ’194 patent) nor Touboul II (issued on November 28, 2000, from an application filed December 22, 1997) constitutes prior art to those claims. We conclude, therefore, that Petitioner has not demonstrated that the 14 combination of Touboul I and Touboul II, or the combination of Touboul I and Dan, renders the challenged claims obvious. CONCLUSION On this record, Petitioner has not shown that Touboul I and Touboul II are prior art to the challenged claims of the ’926 patent. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenges to the patentability of at least one of those claims on the grounds asserted in the Petition. ORDER Accordingly, it is ORDERED that Petitioner’s request for an inter partes review of claims 15, 18–20, 22, 25–27, and 30 of the ’926 patent is denied.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Incorporation by reference “provides a method for integrating material from various documents into a host document . . . by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Zenon, 506 F.3d at 1378 (quotation marks omitted). Incorporation by reference must be set forth in the specification and must (1) express a clear intent to incorporate by reference by using the root words “incorporate” and “reference” (e.g., “incorporate by reference”); and (2) clearly identify the referenced patent, application, or publication. 37 C.F.R. § 1.57(c). “Essential material,” such as material necessary to provide a written description of a claimed invention, may be incorporated by reference by reference to a U.S. patent or U.S. patent application publication, as long as the referenced patent or patent application publication does not itself incorporate such essential material by reference. Id. § 1.57(d). In Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011), the Federal Circuit concluded that the broad and unequivocal language “[t]he disclosures of the two applications are hereby incorporated by reference” incorporates the entire disclosures of the two applications. Id. at 1335. The incorporation statement in the ’822 patent is similar: 9 This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/539,667, now U.S. Pat. No. 6,804,780 . . . . This application is also a Continuation-In-Part of and hereby incorporates by reference patent application Ser. No. 09/551,302, now U.S. Pat. No. 6,480,962 . . . . Ex. 1002, 1:11–19. Petitioner acknowledges that the ’780 patent provides written support for the limitations of the challenged claims. Pet. 10. In other words, the ’780 patent does not itself incorporate such “essential material” by reference. See 37 C.F.R. § 1.57(d). Thus, the holding of Harari informs our conclusion that the ’822 patent incorporates by reference the ’780 patent in its entirety. Because the ’194 and ’780 patents share essentially the same disclosure (compare Ex. 1004 with Ex. 1005), we agree with Patent Owner that continuity of disclosure exists between the ’194 and ’926 patents.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“ANALYSIS Claim Construction In an inter partes review, the Board interprets a claim term in an unexpired patent according to its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1278–81 (Fed. Cir. 2015), 1 Shlomo Touboul, U.S. Patent No. 6,092,194, issued July 18, 2000 (Ex. 1005, “Touboul I,” or “the ’194 patent”). 2 Shlomo Touboul and Nachshon Gal, U.S. Patent No. 6,154,844, issued Nov. 28, 2000 (Ex. 1012, “Touboul II”). 3 Asit Dan et al., U.S. Patent No. 5,825,877, issued October 20, 1998 (Ex. 1013, “Dan”). 4 cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). On this record and for purposes of this Decision, we determine that no claim terms require express construction.” slip op. at 4
Claim construction§ 112 disclosurePatents in suitUS 7,613,926 - Larose Industries, LLC v. Capriola Corp.All claims unpatentablePTAB · Jun 26, 2014 · IPR2013-00121 · APJ James B Arpin · IPR · Final written decision
Claims 1-27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28-31 is denied because patentability was not established and the claims would have been obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“bears the burden of establishing the patentability of the proposed substitute claims over the prior art of record and also other prior art known to the patent owner. See Paper 36, 32-33. We deny the motion to amend here (1) because Patent Owner has not met this burden and (2) because Petitioner has persuaded us that the substitute claims would have been rendered obvious over the teachings of Teller, Rosen I, and Pawloski.” slip op. at 35
- ExcludeOther
“As noted above, we do not rely on Rosen II in denying Patent Owner’s motion to amend. See supra n.7. Moreover, Patent Owner points to some alleged similarity between the invention claimed in Rosen II and Patent Owner’s invention, as recited in the substitute claims, and makes allegations that Petitioner had access to a product embodying Patent Owner’s claimed invention before the filing date of the Rosen II application. Patent Owner, however, fails to provide persuasive evidence that Petitioner copied Patent Owner’s invention. See Paper 22, 15-16 (“Petitioner (now) expressly recognizes the functional advantage achieved by interconnected cylindrical non-conductive components . . . which renders the proposed substitute claims patentable over the prior art.”); Paper 32, 2-4 (“Indeed, part of the relevance of [Rosen II] teaching the same male-female non-conductive block interface that appears in the proposed substitute claims is precisely because it was not filed until well after Petitioner learned of Patent Owner’s 45 invention.”); see also Paper 36, 13-14 (Patent Owner alleges that Petitioner saw a product embodying features recited in the substitute claims at the New York Toy Fair before the priority date of Rosen II). Thus, the current situation does not require us to assess the merits of Petitioner’s motion to exclude. Accordingly, Petitioner’s motion to exclude evidence is dismissed as moot.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14
Patent outcomesUS 7,731,558 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,731,558 - Larose Industries, LLC v. Capriola Corp.All claims unpatentablePTAB · Jun 26, 2014 · IPR2013-00120 · APJ James B Arpin · IPR · Final written decision
Claims 1–27 are unpatentable over the instituted grounds; the motion to amend with substitute claims 28–31 is denied because Patent Owner did not establish their patentability.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“II. DISCUSSION As noted above, Patent Owner did not file a patent owner response to the petitions. We have reviewed the evidence presented by Petitioner regarding the claims upon which we instituted inter partes review and determine that Petitioner has shown that those claims are unpatentable by a preponderance of the evidence. See Paper 10, 16-32 (combination of Teller and Rosen I), id. at 32-43 (Doherty, and combination of Doherty and Rosen I); Paper 14, 17-25; IPR2013-00121, Paper 1, 23-25 (combination of Feuerborn and Rosen I); IPR2013-00121, Paper 11, 18-22. Specifically, Petitioner has shown by a preponderance of the evidence that claims 1-27 are unpatentable under 35 U.S.C. § 103(a), as obvious over Teller and Rosen I; claims 1-6, 8-22, 24, 26, and 27 are unpatentable under 35 U.S.C. § 102(e), as anticipated by Doherty; claims 7, 23, and 25 are unpatentable under 35 U.S.C. § 103(a), as obvious over Doherty and Rosen I; and claims 18-25 are unpatentable under 35 U.S.C. § 103(a), as obvious over” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“1. Preamble Terms The substitute claims recite the following preambles: “[a] building block comprising” (claim 28), “[a] building block set comprising” (claim 29), “[a]n illuminated toy building block set comprising” (claim 30), and “[a]n illuminated building block comprising” (claim 31). As we determined with respect to the challenged claims, the preambles of the substitute claims do not recite additional structure that is absent from the bodies of the claims or is necessary to give life, meaning, and vitality to the claims. Paper 14, 8- 9. Applying the broadest reasonable interpretation of the substitute claims in light of the Specification, we again conclude that the preamble terms are not limiting and, in particular, that the recitations of “building block,” “building block set,” and “toy building block set” in the preambles do not limit the scope of the claims to toy blocks or toy block sets. Id.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“3. “Means for Conducting Electrical Current Through the LED in Each Block and Each of the Electrically Conductive Mechanical Connectors of Each Block” The parties do not dispute our interpretation of “means for conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” in original claim 18. See Paper 14, 14-15. For purposes of substitute claim 30, we adopt our previous analysis and interpret the identical means-plus-function limitation to have the function of “conducting electrical current through the LED in each block and each of the electrically conductive mechanical connectors of each block” and the corresponding structure of power source 70.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“a. Non-conductive A relevant definition of the term “conductive” is “having the property or capability of conducting.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 277 (2d Random House ed. 1999) (Ex. 3001). However, the term “conductive” is used in the Specification to describe the property of conducting electricity. Ex. 1001, col. 4, ll. 43-56. Further, the entire Specification is directed to conducting electricity to illuminate a set of building blocks, and no other type of energy conduction is described that would allow building blocks to be so illuminated. This supports interpreting the claim term as limited, under the circumstances, to conducting electricity. Thus, we construe “non-conductive” as the opposite of conductive, i.e., lacking the property or capability of conducting electricity. b. Cylindrical A relevant definition of the term “cylindrical” is “of, pertaining to, or having the form of a cylinder,” and a relevant definition of the word “cylinder” is “a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to 15 them.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 331(Ex. 3001). Further, the term “cylindrical” is used in the Specification to describe the cylindrical embodiment of Figure 1 of the ’558 Patent. Ex. 1001, fig. 1; col. 4, l. 66-col. 5, l. 1 ((“In the embodiment illustrated in [Figure 1], the body 30 is substantially cylindrical 31 with one of the mechanical connectors at either end 32 thereof.”; emphasis added)). Thus, we construe “cylindrical” as an adjective describing a structure as “of, pertaining to, or having the form of a cylinder,” where a cylinder is a surface or solid bounded by two parallel planes and generated by a straight line moving parallel to the given planes and tracing a curve bounded by the planes and lying in a plane perpendicular or oblique to them. c. At Any Degree of Rotation A relevant definition of the word “degree” is “the 360th part of a complete angle or turn . . .” (emphasis added); a relevant definition of the word “turn” is “to cause to move around or on an axis or about a center; rotate: to turn a wheel” (emphasis added); and a relevant definition of the word “rotation” is “the act of rotating; a turning around as on an axis” or “one complete turn of such a body.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY at 349, 1145, 1406 (Ex. 3001). Further, rotational axis lr is depicted in Figure 4 of the ’558 Patent and described in the Specification with respect to the rotation of a block body in the form of wheel 38. Ex. 1001, fig. 4; col. 5, ll. 9-11. Referring to Figures 7 and 8 of the ’558 Patent, wheels 38 may be used to create a wheeled structure resembling a vehicle. Id. at figs. 7, 8; col. 5, ll. 11-13. Thus, we construe the term “at any degree 16 of rotation” as any part of one complete turn of a body as on an axis, such as, for example, any part of one complete turn of a wheel on a rotational axis.” slip op. at 15
Patent outcomesUS 7,731,558 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,731,558
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.