- 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 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00701 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because JP029 supports claims 1–4 as of April 26, 2002, making the June 2002 Draft H.264 Standard unavailable as prior art for the asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’059 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’059 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“Ex. 2001 ¶ 46 (emphasis added) (citing Ex. 1004 (H.324, 1998), Fig. 1, 1–2). In other words, according to the testimony of Dr. Richardson, which the record supports and Petitioner does not dispute, the applicable standards, known to artisans of ordinary skill prior to the filing date of JP029, show multiplexing and demultiplexing the coded audio and video, thereby satisfying claim 1’s limitations for multiplexing and demultiplexing coded audio data, contrary to Patent Owner’s arguments. See Pet. 25.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for patent owner
“argument, Petitioner has not shown that such a disclaimer exists in the prosecution history. The purported disavowal of claim scope with respect to the plain meaning of a claim term must be unambiguous, clear, and unmistakable to one of ordinary skill in the art. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (citations omitted). Petitioner has not made such a showing. Rather, Petitioner points to language that was added to the claim during prosecution, namely, “performing arithmetic coding on a first bit of the binary data corresponding to each absolute value of the coefficients,” and concludes that this language requires coding a first bit separately from the remaining bits, using separate probability tables. Pet. Reply 10 (citing Ex. 1012, 656). We agree with Patent Owner, that the plain meaning of this claim language does not require coding a first bit separately from the remaining bits, using separate probability tables. Prelim. Resp. 57–58. Turning to the prosecution history, Petitioner does not explain how the applicant’s remarks to the Examiner in the prosecution history show a clear and unmistakable disavowal of claim scope. See Pet. Reply 9–10. Further, the applicant did not state to the Examiner that the claim requires coding a first bit separately from the remaining bits, using separate probability tables. See Ex. 1012, 662–664. On this limited record, it is not clear how the applicant’s arguments in the prosecution history persuasively show that the applicant made a clear and unmistakable disavowal of claim scope. Therefore, we construe the claim according to its plain and ordinary meaning, which does not require coding a first bit separately from the remaining bits using separate probability tables as alleged by Petitioner.” slip op. at 25
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner. Petitioner’s claim construction regarding prosecution history disclaimer does not address “unanticipated and incorrect statements” made by Patent Owner “regarding the law with respect to written description and the disclosure of the subject patent and priority applications, to which Petitioners need to respond.” Ex. 1041. Specifically, Petitioner does not allege an incorrect statement in Patent Owner’s contention that “Petitioner admits that JP029 discloses performing the encoding on all bits of binary data, including the ‘first bit’ of data.” Prelim. Resp. 55 (citing Pet. 29). Nor does Petitioner allege an incorrect statement in Patent Owner’s contention that “Petitioner’s expert opines – with no explanation or citation – that the claims require ‘separately arithmetically encoding/decoding a first bit of binary data using a separate probability table from the probability table (or tables) used to encode/decode the remaining bits of binary data.’ Nothing in the claims require this.” Id. at 57 (citing Ex. 1003 ¶ 52). Instead, Petitioner, for the first time in its Reply, proposes construing the claim beyond its plain and ordinary meaning in order to rebut Patent Owner’s contention that the plain and ordinary meaning of the claim does not require coding a first bit separately from the remaining bits, using separate probability tables. Petitioner has not explained how Patent Owner made an incorrect statement, nor has Petitioner explained why Patent Owner’s construction of the claim based on the claim’s plain and ordinary meaning was unanticipated. See Pet. 7 (“[T]he Petition does not present any controversy over claim meaning and the Board need not construe any terms.”); see id. at 8 (“Petitioner maintains that the Challenged Claims would have been obvious under any reasonable construction.”). Petitioner’s new claim construction alleging prosecution history disclaimer, and Petitioner’s corresponding new argument based on the alleged disclaimer, are untimely.” slip op. at 24
Claim construction§ 112 disclosurecites GrahamPatents in suitUS 7,970,059 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00629 · APJ Jeffrey S Smith · IPR · Institution
The Board denied institution because Patent Owner established claim 1’s priority to JP665, antedating the references relied on in both obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’878 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’878 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“. . . each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. §112.” Lockwood, 107 F.3d at 1571. To satisfy this written description requirement, a priority application must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351. “It is the specification itself that must demonstrate possession,” and “a description that merely renders the invention obvious does not satisfy the requirement.” Id. at 1352.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on its expert, Dr. Schonfeld, Petitioner contends as follows: A POSITA at the time would have had at least an undergraduate degree in Electrical Engineering, Computer Science, Computer Engineering, or a related field (or equivalent work experience in the that field), and two or more years of experience with audio, image, or video coding. Ex. 1003, ¶ 24. The relevant experience would include a working understanding of the then-existing audio and video coding standards, including ongoing work on emerging standards. Id. Pet. 15 (citing Ex. 1003 ¶ 24). Dr. Schonfeld adds that “a POSITA would have a working understanding of the then existing audio and video encoding standards (e.g., H.263), as well as ongoing work on emerging standards (e.g., H.26L/H.264).” 1003 ¶ 24. Dr. Richardson, Patent Owner’s expert, agrees with, and applies, Dr. Schonfeld’s proposed level of ordinary skill. Ex. 2001 ¶ 30 (citing Ex. 1003 ¶ 24). Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as agreed upon by Dr. Schonfeld and Dr. Richardson, because it is consistent with the evidence of record, including the asserted prior art and ’878 patent specification.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As Petitioner argues, it is not necessary to explicitly construe any claim terms. See Pet. 7. Any construction would have no effect in the analysis of the dispositive priority issue here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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§ 112 disclosurecites GrahamPatents in suitUS 8,139,878 - Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution deniedPTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “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). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22
§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 7,769,238 - PTAB · Apr 26, 2022 · PGR2022-00007 · APJ Thu A Dang · PGR · Institution
The Board instituted PGR on claims 1–19 based on likely lack of written description and obviousness over Ellison and Muir, with Al-Salqan or Searle added for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Section 324(a) of Title 35 of the United States Code provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the information in the Petition satisfies the threshold provided in 35 U.S.C. § 324(a) and we institute this proceeding.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998) (emphasis added). In other words, where the written description fails to disclose an element explicitly, “the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed.” Id. at 1354–55 (emphases added). At this stage of the proceeding, we do not find persuasive Patent Owner’s contention that a person of ordinary skill in the art would have recognized that authentication software has a “private key” that forms an “integral part of the authentication software component and/or is embedded therein” (Prelim. Resp. 13 (quoting Ex. 1001, 5:39–40)), in view of the cited section in the Detailed Description describing the authentication software as comprising the unique serial number, the unique software ID and/or a private encryption key, but only the unique serial number or the unique software ID is embedded therein. See Ex. 1001, 5:39–49. That is, we are unpersuaded at this stage of the proceeding that the person of ordinary skill in the art will directly and unambiguously deduce from the ’773 application as filed that the “private encryption key” is embedded in the authentication software, as Patent Owner contends. Prelim. Resp. 13. Instead, we find persuasive Petitioner’s contention that the ’480 patent (i.e., the ’773 application) merely teaches storing the digital signing algorithm in a secure part of the BIOS 44 but is silent as to storage of the private key. Pet. 18 (citing Ex. 1001, 9:27–34, 13:31–44; Ex. 1003). As Petitioner contends, the” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The Specification of the ’480 patent discloses secure area 62 only accessible to BIOS 44, comprising applications and storage locations not reported to operating system 48 (Ex. 1001, 8:62–9:1), wherein, as shown in Figure 3, secure area 62 comprises secure storage location 60, recovery application 56, and authentication software 54. Id. at 9:7–11. That is, the Specification shows “secure memory inaccessible to said operating system” as a location that holds software not accessible to operating system 48. Id. Nothing in the Specification, or the general knowledge in the art, limits “secure memory inaccessible to said operating system” to Ellison’s “isolated storage area 70,” or precludes Ellison’s “secure platform 200,” as Patent Owner proposes. Prelim. Resp. 35–36. In fact, nothing in the Specification or the general knowledge in the art limits the “storage” to any amount of time in the secure memory. We are unpersuaded by Patent Owner’s apparent position that software that is loaded into a secure location of execution is not software that is “stored” in a “secure memory” location. Prelim. Resp. 35–36. In view of the Specification and the general knowledge in the art, we determine that the term “stored in said secure memory inaccessible to said operating system” encompasses being held in any secure location that is determination here is preliminary, and the parties are invited to address this claim construction issue at trial, if so desired.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“ii. “providing a private key in a memory of said electronic device, said memory being a secure part of a Basic In Out System or any other secure location in said electronic device, which private key is inaccessible to a user of said electronic device, wherein the private key is encrypted when the private key is stored in said memory” (claim 1) Petitioner contends that Ellison’s “isolated execution regions ‘is accessible only to elements of the operating system and processor operating in isolated execution mode,’” and that “isolated mode applets 461 to 46K and their data are tamper-resistant and monitor-resistant from all software attacks from other applets and OS 12.” Pet. 56 (citing Ex. 1006, 4:1–22). According to Petitioner, “[a] user is not an element of the operating system and processor operating in isolated execution mode, and therefore 6 The issue of whether the preamble is limiting need not be resolved at this stage of the proceeding because, regardless of whether the preamble is limiting, Petitioner shows sufficiently for purposes of institution, and Patent Owner does not dispute, that the combination of Ellison and Muir teaches a method for performing an electronic transaction between first and second transaction parties, as recited in the preamble. See Realtime Data, 912 F.3d at 1375 (noting that we need only construe “only those terms that . . . are in controversy”). Ex. 1003 ¶ 92). Petitioner then contends that Ellison discloses “a secure platform 200 that ‘includes the OS nub 16, the processor nub 18, a key generator 240, . . . , all operating within the isolated execution environment.’” Pet. 58 (citing Ex. 1006, 8:25–32; Ex. 1003 ¶ 95). Petitioner also contends that “the private key 204 can be stored in the cryptographic key storage 155 and in a multiple key storage of the non-volatile flash memory 160,” and “only the OS nub 16 can retrieve the private key.” Id. at 59–60. According to Petitioner, because “the OS nub 16 is within the secure platform and isolated environment,” it would have been obvious to a person of ordinary skill in the art (POSITA) that “the cryptographic key storage 155 and the non-volatile flash memory 160 are secure storage locations so that the private key 204 can be accessed securely by OS nub 16.” Id. (citing Ex. 1003 ¶ 96). Thus, Petitioner contends that “Ellison explicitly teaches that the OS nub 16 and private key 204 shown in platform 200 all operate within the isolated execution environment,” which “would indicate to a POSITA that private key 204 is stored in a secure memory and is inaccessible to a user of said electronic device.” Id. Nevertheless, Petitioner contends that Muir “explicitly teaches a private key 167 stored in a restricted memory space 170 which is inaccessible to the operating system.” Id. at 60 (citing Ex. 1008, 7–9, 3). Petitioner then contends that Ellison’s OS nub 16 “retrieves the encrypted private key 204 and decrypts it for use in the isolated environment.” Pet. 61 (citing Ex. 1006, 8:33–65, 11:1–12:26). Thus, Petitioner contends that “Ellison and Muir render obvious the private key 204 being encrypted when stored in a secure memory (e.g.,” slip op. at 32
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,992,480 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 18, 2022 · IPR2021-01114 · APJ Thu A Dang · IPR · Institution
The Board denied institution of IPR challenging claims 17–19, 26–31, 35, and 36 because substantially the same arguments were previously presented and Petitioner did not show material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“For the foregoing reasons, the ’882 application identified the ’886 provisional with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) incorporated the ’886 provisional by reference.” slip op. at 23
- Skill levelOther
§ 112 disclosureDiscretionary denial - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Jan 5, 2022 · IPR2021-01105 · APJ Scott A Daniels · IPR · Institution
The Board denied institution for claims 1–3, 7–13, and 18–20 under § 325(d), finding the arguments previously presented and no material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“Under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented 8 to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. If the petitioner fails to show that the Office erred, the Director may exercise his or her discretion not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8 at 24 (exercising discretion where “Petitioner has not pointed to error by the Examiner”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“The Examiner in each of these cases did not object to the amendments as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1 for lack of written description support for the claims. NTP, 654 F.3d at 1277. Instead, the Examiner entered the amendments and subsequently allowed the ’912 application with the subject matter added from Chu ’886. Ex. 1009, 419 (Notice of Allowance and Fee(s) Due). The incorporation by reference statement in the transmittal form also was never objected to by any Examiner during prosecution of the ’882 application (Chu ’330), the ’758 application (initial parent application), and all eight continuation applications in the priority chain of the ’797 patent, as well as Chu ’777 and all six reissue applications in the priority chain of Chu ’777, as noted in our Decision Denying Institution in IPR2021-00607, Paper 7 at 20. Moreover, none of the Examiners required the applicant to change its benefit claims from “continuation” to “continuation-in-part” in those continuation applications. 20 For the foregoing reasons, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (Chu ’330) properly incorporated Chu ’886 by reference. In addition, as discussed above, Petitioner admits that the ’758 application (the initial parent application) incorporated by reference the ’882 application. Pet. 28; see also Ex. 1013, 4:50−53. It also is undisputed that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120 and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, 1:10−28, 9:36–39; Ex. 1008, 1:12−27, 9:27−29. As such, we also find that Petitioner has failed to show (1) the ’797 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications did not properly incorporate by reference Chu ’886, (3) the amendments adding the subject matter from Chu ’886 improperly introduced new matter, and (4) that there is no support for the added written description in the ’436 patent, and hence the ’797 patent, in the respective parent applications. Pet. 23−39.” slip op. at 20
§ 112 disclosureDiscretionary denialPatents in suitUS 8,977,797 - Intel Corporation v. Acqis LLCInstitution deniedPTAB · Dec 6, 2021 · IPR2021-01108 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1–3, 7–9, 13–17, 19, 20, 25, and 33–35 under § 325(d), finding the same arguments were previously presented and no material examiner error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“II. ANALYSIS 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in both of the asserted grounds.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Decided for patent owner
“As such, we find that Petitioner has failed to show (1) the ’768 patent is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s parent applications in the’768 patent family did not properly incorporate by reference the ’886 provisional, and (3) the amendments adding the subject matter from the ’886 provisional improperly introduced new matter. Pet. 18−30.” slip op. at 23
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 9,529,768 - Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentablePTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for patent owner
“B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21
Patent outcomesUS 9,207,143 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,207,143 - ROKU, Inc. v. Universal Electronics, Inc.Rehearing deniedPTAB · May 13, 2021 · IPR2019-01595 · APJ Minn Chung · IPR · Rehearing
The Board denied rehearing of its decision denying institution on claims 1 and 2, finding no abuse of discretion on priority entitlement or motivation to combine Darbee and Golender.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW “The burden of showing a decision should be modified lies with the party challenging the decision,” and the challenging party “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in a 1 Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 13 (Notification of Receipt of POP Request)), which the POP denied (Paper 14 (Order)). paper of record. 37 C.F.R. § 42.71(d). Because Petitioner seeks rehearing of our Decision denying institution of trial based on the Petition, it must show an abuse of discretion. See 37 C.F.R. § 42.71(c) (“When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.”). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence that could have been presented in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“issue upon which the priority determination turns—what the priority applications reasonably would have conveyed to a person of ordinary skill in the art—because Dr. Medvidovic did not provide any testimony on that issue. And we did not overlook or misapprehend any testimony of Dr. Medvidovic regarding what the priority applications reasonably would have conveyed to a person of ordinary skill in the art because we could not have overlooked or misapprehended any testimony that was not presented in the Medvidovic Declaration. As discussed above, Dr. Medvidovic’s testimony based on what is expressly disclosed in or necessarily follows from the disclosures of the priority applications was insufficient because Dr. Medvidovic did not explain adequately why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. Thus, Dr. Medvidovic’s testimony was insufficient to raise a genuine issue of material fact on the issue of what the priority applications reasonably would have conveyed to a person of ordinary skill in the art. Although Patent Owner’s declarant, Mr. Bear, provided detailed testimony and explanations regarding how a person of ordinary skill in the art would have understood the priority applications to describe the subject matter recited in the User Action Limitation (see Ex. 2001 ¶¶ 111–122, 126–127), Dr. Medvidovic did not provide adequate testimony or explanations to the contrary on the issue (see Ex. 1010 ¶¶ 53–63).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“misapprehend or overlook 37 C.F.R. § 42.108(c). The mere fact that Dr. Medvidovic provided testimony different from the testimony of Mr. Bear does not by itself raise a genuine issue of material fact. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“The mere existence in the record of dueling expert testimony does not necessarily raise a genuine issue of material fact.”). As the Request acknowledges, Dr. Medvidovic in his Declaration (Ex. 1010, “Medvidovic Declaration”) testified that the subject matter of the User Action Limitation is “neither expressly disclosed [in] nor necessarily follows from” the descriptions in the priority applications about event journal data. Req. 3 (emphases added) (citing Ex. 1010 ¶¶ 57–62). As discussed above, however, the test for determining compliance with the written description requirement under 35 U.S.C. § 112 is whether the original disclosure of the earlier-filed application reasonably would have conveyed to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., 598 F.3d at 1351. The record shows that Dr. Medvidovic did not provide any testimony in his Declaration as to what the disclosures in the priority applications reasonably would have conveyed to a person of ordinary skill in the art. See Ex. 1010 ¶¶ 53–63. Nor did Dr. Medvidovic explain adequately in his Declaration why the disclosures in the priority applications would not reasonably have conveyed to a person of ordinary skill in the art the subject matter of the User Action Limitation. See id.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Petitioner’s definition of the level of ordinary skill in the art, however, “less education can be remedied with additional work experience (e.g., 5–6 years).” Pet. 7 (citing Ex. 1010 ¶¶ 64–67). As stated in the Bear Declaration, Mr. Bear’s work experience includes at least 9 years of computer software programming using a variety of coding languages, such as BASIC, Pascal, C, C++, and 68000 Assembly Language. See Ex. 2001 ¶¶ 10–12. Thus, Mr. Bear is qualified to testify from the perspective of a person of ordinary skill in the art under Petitioner’s definition of a person of ordinary skill in the art. As discussed in the Decision, although we did not find the parties’ proposals for the level of ordinary skill in the art to be materially different, to the extent the testimony from the parties’ declarants on the level of ordinary skill in the art raised a genuine issue of material fact, we adopted and applied Petitioner’s definition for purposes of the Decision, being mindful of the rule that “a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.” Dec. 9 (citing 37 C.F.R. § 42.108(c)). Thus, the record shows that, under Petitioner’s definition of the level of ordinary skill in the art adopted in consideration of § 42.108(c), the Decision appropriately credited Mr. Bear’s testimony on what the priority applications reasonably would have conveyed to a person of ordinary skill in the art.” slip op. at 11
§ 103 obviousness§ 112 disclosurePatents in suitUS 8,015,446
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.