- PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “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 set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. 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 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Facebook, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01461 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the pending substitute claims lack written-description support and are obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Mr. Schmandt’s testimony, Facebook argues that a person of ordinary skill in the art “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of context-based computer systems, such as the collection, processing and use of context data in computer systems capable of adapting their operation based on context.” Pet. 6 (citing Ex. 1002 ¶¶ 15– 18). Facebook also contends that a person might qualify as an ordinarily skilled artisan “with more formal education and less technical experience, or vice versa.” Id. For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 16–17. Because Facebook’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of using contextual data in computer systems).” slip op. at 10
- Strike new argumentNew argument consideredDecided for petitioner
“construction of the term “facts and assertions” or the identification of facts and assertions within Cheng. See Paper 23, 1–2. Having reviewed the arguments, we do not consider them untimely. As we discuss in more detail below, Facebook relied on the ordinary and customary meaning of the term “facts and assertions” in its Petition, and then when PARC raised an alternative construction of the term in its Response, Facebook responded to those arguments. See infra Sections IV.B.2, IV.C.4(a). Facebook’s Reply only responded to arguments raised in PARC’s Response and was not untimely. See 37 C.F.R. § 42.23(b) (permitting a petitioner to respond to arguments in a patent owner response); Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) (“[T]he petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used ‘to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.’” (quoting Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1369 (Fed. Cir. 2016))). Moreover, PARC had a meaningful opportunity to address the arguments in its Sur-reply and in oral argument. See PO Sur-reply 7–12; Tr. 22–34. Thus, we do not find Facebook’s contested arguments untimely and we have considered them in our decision.7” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Facebook. As we discuss below, Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1003, Fig. 7. Also, as PARC acknowledges, Facebook’s expert Mr. Schmandt stated in deposition that he assumed, for his analysis, that the term “context graph” requires a “graph-based model.” PO Resp. 22 (citing Ex. 2019, 36:16–37:8); see also PO Sur-reply 4. Thus, because Facebook’s analysis of Cheng is consistent with the assumption that “context graph” has the meaning PARC proposes in this proceeding, we do not need to construe the term “context graph” to reach our decision. See 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 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the parties that a person of ordinary skill in the art would have understood the term “fact” to include an indication of truth, whereas an assertion need not include such an indication. However, we disagree with PARC that a person of ordinary skill would have considered the term “assertion” to exclude facts. Indeed, in its ordinary and customary meaning, a fact stored in a context graph would be a type of assertion. We appreciate PARC’s argument that when two different terms appear in a claim, they presumably refer to different things. See PO Resp. 27 (citing CAE Screenplates, 224 F.3d at 1317). And we agree that the two terms have different meanings in claim 1 based on the plain meaning of each term. However, the specification refers to “stor[ing] facts and assertions about a user’s behavior and interests,” which simply appears to identify a single category of data for storage, i.e., “facts and assertions,” without specifying a clear difference between “facts” and “assertions.” See Ex. 1001, 3:21–22. In any event, we find no evidence of record suggesting that either (1) the (citing Pet. Reply 8–9). Because Facebook appears to have been relying on what it regarded as the plain meaning of the terms without proposing an explicit construction, we do not interpret Facebook’s argument in the Petition (Pet. 20–21) to imply that there is no distinction between a fact and an assertion, and do not find Mr. Schmandt’s later testimony (see, e.g., Ex. 2019, 41:3–11) inconsistent with arguments made in the Petition. ordinary and customary meaning of the term “assertion” excludes facts, or (2) that the ’439 patent uses these terms in a way that departs from their ordinary and customary meaning. That claim 1 requires the presence of both “facts” and “assertions” does not render the two terms superfluous, as this would exclude prior art in which a context graph includes only assertions but not facts. On the other hand, a disclosure of a collection of facts would meet the term “facts and assertions” because a person of ordinary skill in the art would have regarded any subset of the facts to also be assertions.” slip op. at 15
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - PTAB · Jun 16, 2022 · IPR2022-00300 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 and 22 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(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 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.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018); see 37 C.F.R. § 42.108. Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’570 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶ 46). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’570 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 5. This assessment is consistent with the ’570 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). In applying such standard, claim terms are generally given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). The parties do not identify any claim terms for construction. Pet. 15; see generally Prelim. Resp. Thus, at this stage of the proceeding, we do not provide any express constructions, and we afford the claim terms their plain and ordinary meaning. 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 12
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,952,570 - Apple Inc. v. LBT IP I LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01189 · APJ John A Hudalla · IPR · Final written decision
Claims 1, 4–6, 8, 10, 13, and 15 are unpatentable as obvious over Sakamoto; the Board denied the motion to amend because the proposed substitute claims were also obvious over Sakamoto.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We do not agree with Patent Owner that the Specification’s statement about tradeoffs between “optimal battery life” and “optimal update rate” necessarily requires a spectrum of at least three threshold values (i.e., two endpoints and at least one value between them). If anything, this statement supports the view that such tradeoffs can be made between as few as two points: an endpoint where less updates are traded for better battery life, and an endpoint where worse battery life is traded for more updates. See Ex. 1001, Fig. 4 (slider 432). We also do not ascribe any significance to the plural “tradeoffs” in Patent Owner’s cited statement, because every point in such a spectrum would involve its own tradeoffs between battery life and update frequency. Thus, we agree with Petitioner that the Specification does not support Patent Owner’s interpretation of a multitude as necessarily being three or more. We also consider the Specification’s statement about “obtain[ing] optimal battery life, obtain[ing] optimal update rate, [and the] tradeoffs between them” (Ex. 1001, 11:58–63) to at least be consistent with the notion that “multitude” means two or more in the context of the ’774 patent.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“switching among Sakamoto’s positioning modes for teaching the updated sets. Pet. 31 (citing Ex. 1004 ¶¶ 5–10, 28). Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Petitioner also explains how changing Sakamoto’s modes changes the associated listen rate and request rate. See Pet. 31–34. And, as acknowledged by Patent Owner at the oral hearing, the “updated set based on the claim language would include either/or both a refresh rate and a listen rate.” Tr. 39:17–18. Thus, Petitioner persuasively shows that Sakamoto teaches the recited “updated set of network communication signaling protocols.” We also are persuaded that Sakamoto’s modes switch “in substantially real-time” based on Sakamoto’s teaching of an “automatic shift” from high sensitivity mode to normal mode based on the battery falling below a threshold and based on Sakamoto’s aim of reducing power consumption. Pet. 29–30 (quoting Ex. 1004 ¶¶ 29, 46); Ex. 1003 ¶ 88. Mr. Andrews testifies that an ordinarily skilled artisan “would have appreciated that switching the positioning modes (responsive to a low-power condition or to user command) changes the frequency with which Sakamoto’s terminal transmits and receives data (i.e., updates the communication signaling protocol of the terminal).” Ex. 1003 ¶ 89. Against this showing, Patent Owner has not put forth any evidence to support its contention that “generat[ing] . . . an updated set” requires the generation of entirely new parameters or that such parameters cannot be taken from predetermined sets. As such, Patent Owner’s position amounts to unsupported attorney argument; it does not undermine Petitioner’s persuasive showing that Sakamoto teaches real-time updating of network signaling protocol sets in order to reduce power consumption via Sakamoto’s mode switching. See, e.g., Ex. 1003 ¶¶ 88–89; Ex. 1004 ¶¶ 28, 29, 46.” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Having considered Petitioner’s contentions and evidence and Patent Owner’s arguments, we find that Sakamoto teaches every limitation of proposed substitute claim 20 in light of the knowledge of a person of ordinary skill in the art. Thus, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of proposed substitute claim 20 would have been obvious over Sakamoto. 2. Proposed Substitute Claims 23–25 Proposed substitute claims 23–25 depend directly or indirectly from proposed substitute claim 20 and are the same as original claims 4–6 except that the claim dependencies have been updated. We have analyzed all limitations of proposed substitute claims 23–25 above. See supra §§ II.D.3– 5. Thus, for the same reasons, we determine Petitioner has shown, by a preponderance of the evidence, that the subject matter of proposed substitute claims 23–25 would have been obvious over Sakamoto.” slip op. at 65
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Based on our understanding of this limitation (see infra § III.C), we do not agree with Petitioner’s arguments. Regarding the request rate and listen rate, the ’451 application discloses that the “updated set of network communication signaling protocols . . . includes an update rate (e.g., refresh rate) of location coordinate packets 446.” Ex. 2017, 17:14–16. In turn, “the update rate of location coordinate packets 446 includes request rate 420 of location coordinate packets 422 by target host 452 . . . and/or listen rate 425 of location coordinate packets 422 by portable electronic tracking device 402.” Id. at 17:16–19. Regarding the repeating time interval, the ’451 application discloses that “[i]n response to receipt of updated set of network communication signaling protocols, portable location tracking device 402 adjusts settings (an internal time schedule)” and “[p]ortable location tracking device 402 checks internal time schedule to determine if it should listen for (perform a location lookup of) location coordinates 422 from satellite navigation system 403.” Id. at 18:7–15. Further, the ’451 application describes examples of update rate intervals (in minutes) for tracking a dog, a car, and rented construction equipment that constitute the repeating time intervals for the request rate and/or listen rate. See id. at 21:8–22:16. In light of these disclosures, we determine that the ’451 application adequately supports “a request rate representing a repeating time interval for of location coordination packets to be communicated to a target host and a listen rate representing a repeating time interval for receipt of the location coordinate packets from a satellite navigation system,” as recited in proposed substitute claim 20 and similarly recited in proposed substitute claim 27. For these reasons, and considering Patent Owner’s evidence of support in the ’807 publication and the ’451 application, we determine that Patent Owner has shown adequate written description support for proposed substitute claims 20, 23–25, 27, 29, 32, and 34.” slip op. at 54
Patent outcomesUS 8,497,774 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,497,774 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), 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.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764 - Netskope, Inc. v. Bitglass, Inc.InstitutedPTAB · Dec 14, 2021 · PGR2021-00091 · APJ James J Mayberry · PGR · Institution
Instituted PGR on claims 1, 2, 4–10, and 12–16; the Board found the petition showed a more-likely-than-not basis that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, 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.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the Challenged Claims is unpatentable. Accordingly, we institute a post-grant review of the Challenged Claims of the ’671 patent.” slip op. at 2
- Parallel petitionsOther
“II. DISCRETIONARY DENIAL Patent Owner argues that we should exercise discretion to deny the Petition in this proceeding, or the petition in PGR2021-00092. Prelim. Resp. 15. Patent Owner argues that Petitioner filed two petitions challenging the same patent without justifying the need for two petitions. Id. at 3–15. We exercise our discretion to not institute trial in PGR2021-00092, because Petitioner did not justify two petitions challenging the ’671 patent.13 In view of the denial of institution of PGR2021-00092, we need not consider further Patent Owner’s arguments on discretionary denial in this Decision.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not define the level of ordinary skill and, instead, states that we should “apply[] the Petition’s asserted definition of the level of ordinary skill in the art.” Prelim. Resp. 44. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art. We determine that Petitioner’s definition is consistent with the prior art of record and the skill reflected in the Specification of the ’671 patent, based on our review of the limited record.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that no claim terms need an express construction. Pet. 25. Patent Owner states that “the Petition does not appear to present any issues that require the Board to construe the claims to resolve the issues at the institution stage.” Prelim. Resp. 44. We agree with the parties that, at least at this stage of the proceeding, we need not expressly construe any claim term. See 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 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,855,671 - Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.
RulingsFinal written decision- Skill levelOther
“differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35
Patent outcomesUS 6,154,844 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,154,844 - Sega Of America, Inc. / Ubisoft, Inc. et al. v. Uniloc USA, Inc. And Uniloc Luxembourg S.A.All claims unpatentablePTAB · Mar 10, 2016 · IPR2014-01453 · APJ Donna M Praiss · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–11 and 17–20 as anticipated by Schull; claims 10–11 also as obvious over Schull; claims 12–14 as anticipated by Logan or obvious over Haines and Manduley; claims 15–16 as obvious …
RulingsFinal written decision- Skill levelOther
“between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Moreover, a determination of unpatentability on the ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The obviousness analysis “should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In addition, we do not find credible Dr. DiEuliis’s testimony that the text in Figure 2B, which states “registration no. generated from user details added to serial no. is encrypted and re-arranged,” describes the addition of two numbers (registration no. and serial no.). There is no previous step in the flowchart depicted in Figure 2B that describes the step of generating the registration number to indicate that the registration number is an input, rather than an output. Ex. 1025, Fig. 2B; see Ex. 1026, Fig. 2. Further, as explained next, the “user details” encompass text, which further explains why the flowchart is not discussing the addition of numbers.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“Regarding Petitioner’s assertion that certain claim terms lack definiteness or written description support, because those issues are neither appropriate for an inter partes review proceeding nor briefed by the parties, we do not address them in this decision. See 35 U.S.C. § 311(b). For purposes of this decision and for the reasons expressed by the District Court, we adopt and apply the constructions provided in the table above. See Ex. 1008, 53–54, 58–61.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We are persuaded by Petitioner’s argument that Schull discloses a summation algorithm for generating its Passwordable ID. As explained by Petitioner, Schull’s algorithm combines three ID numbers: Program ID, Feature ID, and Target ID, which Petitioner refers to as X, Y, and Z in its explanation. Pet. 21. The X number has “N” digits, the Y number has “M” digits, and the Z number has “T” digits. Id. The algorithm combines the numbers X, Y, and Z “(e.g., by concatenating them to produce a number” slip op. at 28
Patent outcomesUS 5,490,216 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 5,490,216
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.