- PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - PTAB · Oct 11, 2023 · IPR2023-00617 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 3, 12, 14, and 15 on all asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons given, Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claims 1 and 12.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 9 (citing Mudge Decl. ¶ 87). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Mudge explains that “[a person of ordinary skill] would have understood that, while Figure 1 does not depict lines connecting interconnect 108 to core 112-1 and to L2/L3 cache hierarchy, Figure 1’s arrowed lines represent the hierarchical organization of reports and commands between components, not their physical connections.” Mudge Decl. ¶ 99. Dr. Mudge’s testimony is supported by Bose’s description of Figure 1 as showing “a hierarchical power-performance monitor.” Ex. 1005, 3:59–61. Elsewhere, Bose refers to this figure as showing a “management hierarchy” (id. at 6:18) and explains that “[t]o clearly define the responsibility of each layer of the hierarchy, the layers are designed and configured such that the layers report upward and command downward in the hierarchy” (id. at 6:49–52). This disclosure in Bose supports Dr. Mudge’s conclusion that “[b]ased on Bose’s depicted and described hierarchical organization of reports and commands between components, and, based on Bose’s use of the well-known term of art ‘interconnect,’ it would have been obvious to a [person of ordinary skill] that Bose’s interconnect 108 couples and connects to each core and to L2/L3 cache hierarchy.” Mudge Decl. ¶ 99. We find that on this record Petitioner has demonstrated sufficiently at this stage that this element is met by Bose.” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - PTAB · Oct 11, 2023 · IPR2023-00567 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Qualcomm would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“physics, or a related field” and would have had “at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 13 (citing Mudge Decl. ¶ 25). At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 14 (citing Mudge Decl. ¶¶ 77–78). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00459 · APJ James P Calve · IPR · Institution
Instituted IPR of claims 1–7 and 10–31 on all eight asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
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) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 8. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent. Our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Nonetheless, we provide the following guidance for the meaning of “fabric,” in claims 1, 15, 21, and 27 to assist the parties in the upcoming trial, and encourage the parties to address this term at the appropriate stages of the trial. At this stage of the proceeding, based on the current record, we interpret “fabric” as “a network topology such as the physical structure of a switch or network.” This is consistent with an ordinary, customary meaning. Ex. 2003, 3 (defining a “fabric” as “[a] descriptive term referring to the physical structure of a switch or network.”) (cited in Prelim. Resp. 12). This meaning is consistent with Patent Owner’s assertion that “fabric” is an “interconnected topology” in “enterprise networks.” Prelim. Resp. 10. Patent Owner’s declarant, Dr. Black, testifies that “[a]s enterprise networks became larger and larger, a complex, interconnected topology known as a ‘fabric’ was developed to handle the management of such networks.” Ex. 2001 ¶ 44 (cited in Prelim. Resp. 10). Dr. Black testifies that “a fabric of network devices (such as switches or access points for each subnetwork) was developed to manage network traffic between subnetworks, and to and from the Internet.” Id. This meaning is consistent with the ’825 patent, which describes a private network 120 topology of computers and servers coupled together by a local area network (LAN) or a wireless LAN. Ex. 1001, 5:3–9, Fig. 1. “FIG. 2 shows a topology 200 of a cooperative security fabric that consists of network security appliances of FIG. 1.” Id. at 5:50–51 (emphasis added). Root node 220 corresponds to network security appliance 121 and acts as a wide area network (WAN) role in topology 200 to connect a private network to other networks or the Internet. Id. at 5:52–56. It is the outermost network security appliance of the cooperative security fabric. Id. at 5:52–55.” slip op. at 9
- BurdenInstituted
“At this stage, based on the evidence and arguments, we conclude that Petitioner has provided sufficient evidence at this stage to establish that Chandra discloses element 1[b].” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,084,825 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00458 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 8–17, and 21–27 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 15–16. Patent Owner asserts that the positions set forth in the Preliminary Response would be the same under either parties’ proposal. Id. at 16. We adopt Petitioner’s proposal as more consistent with the prior art and the ’678 patent. Our decision would be the same under either formulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. 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.’”). The parties assert that the claims should be given their ordinary and customary meaning in light of the specification and no claim constructions are necessary at this time. Pet. 15; Prelim. Resp. 16. We agree that no express claim constructions are required at this time to render our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“These arguments do not address Petitioner’s contentions that a skilled artisan would have combined Shikfa’s searchable encryption mechanism with Cidon’s encryption technique that divided content into segments with a segment identifier for each chunk to enable a search for encrypted chunks to “allow Cidon’s system to search and locate files on a segment-by-segment basis” as “implemented in Herrmann’s gateway server.” Pet. 43–44 (citing Ex. 1004, Fig. 13; Ex. 1006 ¶¶ 39, 50; Ex. 1002 ¶¶ 105–107). Petitioner asserts that the modified system would have searched encrypted file content without requiring such capability at a storage provider to maintain privacy, to protect confidential information, and to allow storage on cloud storages that lack search capability. Pet. 44 (citing Ex. 1006 ¶ 50; Ex. 1002 ¶ 105). Shikfa’s searchable encryption would improve Cidon’s ability to search the content of encrypted document segments. KSR, 550 U.S. at 417 (using a technique that improved one device to improve other devices in the same way is obvious unless its application is beyond the level of ordinary skill in the art). The improvement preserves the privacy of files, locates files by segments, and allows storage on cloud providers lacking search ability. Pet. 44; see DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding that an implicit motivation exists when an “improvement” makes a product/process stronger, cheaper, faster, lighter, smaller, more durable, and/or more efficient).” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,280,678 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Aug 30, 2023 · IPR2023-00456 · APJ James P Calve · IPR · Institution
Instituted IPR on claims 1–28 on all three §103 grounds based on the Board’s finding of a reasonable likelihood of prevailing on at least one challenged claim.
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) (2022). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of networks and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 13 (asserting that the positions in the Preliminary Response are the same under either proposal). The two formulations are similar, differing mainly in the level of experience required. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and prior art, but our analysis would be the same under either party’s proposal.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties assert that claim terms should receive their plain and ordinary meaning, and no claim terms require construction. Pet. 16; Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable expectation of success (Prelim. Resp. 24), “[t]he reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Absolute predictability of success is not required. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Given the broad scope of natively mounted, the disclosure that AWS provides software to natively mount files (Ex. 1001, 5:23–32), and Burdett’s similar native mounting of cloud files to a scanning service (see Ex. 1004, 23:33–24:18, 25:34–55, 27:20–29:41), Petitioner has shown a reasonable expectation of success in combining Burdett and FortiSandbox to meet this limitation. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue] is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.”). Descriptions of native mounting in the ’856 patent, FortiSandbox, and Burdett indicate that native mounting can be accomplished with a reasonable expectation of success. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references.”). Regarding the motivation to combine, FortiSandbox natively mounts network shares to security devices to scan suspicious files for malware (Ex. 1005, 113–115; Pet. 18–19), and Petitioner contends that this technique would improve Burdett similarly to perform malware scans of public cloud store files via native communications while preventing users from accessing malicious files (Pet. 19, 29–30). See KSR, 550 U.S. at 417.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,036,856 - Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · Aug 10, 2023 · IPR2023-00432 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because neither obviousness ground showed a reasonable likelihood of proving claims 1–4, 8–11, and 13–16 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’823 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Petition as to why one of skill in the art would opt to reconfigure Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“We have reviewed the motions and the documents at issue and have considered the explanations of the confidential nature of the materials for which sealing is sought. We find there is good cause and therefore we grant the motions to seal and the associated request to enter the protective order.” slip op. at 30
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,754,823 - Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” For the reasons that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,642,787 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091
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.