• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2023-00205 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 are obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

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

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also 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, 9 The parties do not present arguments related to objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

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

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

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

    “During the oral hearing, Petitioner argued that the 236 FD has collateral estoppel effect in this proceeding to resolve the disputed issues conclude that the claims are unpatentable as obvious based on the record in this proceeding and, therefore, do not rely on collateral estoppel. We further note that the Court of Appeals for the Federal Circuit has “held that an IPR decision does not have collateral estoppel effect until that decision is affirmed or the parties waive their appeal rights.” United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360, 1372 (Fed. Cir. 2023) (citing XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018) (“[A]n affirmance of an invalidity finding, whether from a district court or the Board, has a collateral estoppel effect on all pending or co-pending actions.”)). No notice of appeal has been filed yet in IPR2022-00236, and the time for filing an appeal has not yet expired.” slip op. at 30

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Samsung Electronics Co., Ltd / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Oct 17, 2023 · IPR2022-00711 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Hiraishi and Butt, with Ellsberry or Kim added for certain dependent claims; the Tokuhiro grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years of work experience in the field of memory module design and operation, or a bachelor’s degree in such engineering disciplines and at least three years of work experience in the field,” and would have had knowledge of various standards for memory, such as Joint Electron Devices Engineering Council (JEDEC) standards, and circuitry used in memories. Pet. 2–3 (citing Ex. 1003 ¶ 37). Patent Owner asserts that it is “applying the level of ordinary skill in the art proposed by Petitioner.” PO Resp. 11. We adopt Petitioner’s uncontested level of ordinary skill with the exception of the phrase “at least,” which introduces vagueness as to the amount of experience.” slip op. at 6

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

    “C. Claim Construction We agree with the parties that we need not construe expressly any claim terms to decide the issues before us. See Pet. 9; PO Resp. 11; see also 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,” slip op. at 6

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

    “We disagree with Patent Owner’s arguments because, as Petitioner points out, the evidence shows that DDR3 devices do not always have edge-aligned data and strobes. See Pet. Reply 4. In particular, Patent Owner’s declarant Dr. Mangione-Smith testifies that the DDR3 standard allows a 200 picosecond maximum DQS-to-DQ skew, “which is a very tight tolerance considering the speed at which the memory devices are operating.” Ex. 2006 ¶¶ 122–125 (citing Ex. 1020, 164). During cross-examination of Dr. Mangione-Smith, Petitioner established that a 200 picosecond tolerance is actually a misalignment of over 28 degrees considering the 2.5 Pet. Reply 4 (discussing this testimony). Thus, the evidence shows that DDR3 data and strobes are not always edge-aligned. Patent Owner dismisses this, stating that “Petitioner’s argument is tantamount to saying that the JEDEC standard prescribes a tolerance for DQS/DQ skew that causes errors, which runs counter to the entire standard-setting process.” PO Sur-reply 3–4. On the contrary, we find that Petitioner’s showing underscores that Butt’s read training has direct applicability to a memory that may potentially skew by as much as 28 degrees. Butt explains that read training is used “to establish optimum DQS strobe settings” and thereby “enables a reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36; see Pet. 44–47 (discussing this disclosure). As the Supreme Court has stated, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. “This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)). We find that Butt’s read training is such a known technique that would improve Hiraishi’s memory based on the benefits identified in Butt and discussed above, i.e., “establish[ing] optimum DQS strobe settings” to enable “reliable data read operation for high speed applications.” Ex. 1029 ¶¶ 33, 36. timing operation” to account for flight time differences between memory devices, pointing to Hiraishi’s retiming operation that is performed after the data are loaded in FIFO (Read) circuit 302. PO Resp. 45 (citing Ex. 1005 ¶ 130). But Petitioner’s obviousness contentions are based on adjusting the timing of strobes before the data are registered in (loaded into) FIFO (Read) circuit 302. See Pet. 35–37 (asserting that the delayed read strobe is “the DQS signal supplied to FIFO (Read) circuit 302,” which is then used to register the data in FIFO (Read) circuit 302). Thus, Patent Owner is pointing to an entirely different operation. Furthermore, even if Hiraishi discloses some mechanism to cope with misaligned data and strobes, we find that Butt’s technique is a “suitable option” in combination with Hiraishi. See Intel, 61 F.4th at 1381. Indeed, in such a case, Hiraishi and Butt “address the same problem,” and Butt’s read training “was a known way to address that problem[, which] is precisely the reason that there’s a motivation to combine under KSR and [Federal Circuit] precedent.” Intel, 61 F.4th at 1380. Thus, it is not necessary for Petitioner to “identify what details are allegedly missing from Hiraishi which are being provided by Butt,” as asserted by Patent Owner. See PO Resp. 44.” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “For the reasons discussed above and based on Petitioner’s contentions and evidence, we find that the combination of Hiraishi and Butt teaches “delay[ing] the first read strobe by a first predetermined amount to generate a first delayed read strobe,” “wherein the first predetermined amount is determined based at least on signals received by the first data buffer during one or more previous operations,” as well as the “sample” and “transmit” operations recited in claim 1. We also find, as discussed above, that a person of ordinary skill in the art would have combined the teachings of Hiraishi and Butt and would have had a reasonable expectation of success in arriving at the claimed invention. c) Conclusion for Claim 1 We conclude that the subject matter of claim 1 would have been obvious based on the combined teachings of Hiraishi and Butt.” slip op. at 19

  Patent outcomesUS 10,860,506 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,860,506
• Trend Micro, Inc. v. Webroot Inc.Institution denied
  PTAB · Oct 13, 2023 · IPR2023-00662 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We may 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) (2018). For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we do not institute inter partes review. B.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “4 Petitioner also cites page 10 of Tahan, but we find no mention of either SVP or SVM there, and Petitioner does not explain where it might be disclosed. 5 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition based on the state of the related litigation. See Prelim. Resp. 3–18.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Petitioner contends that one of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics such as malware/exploit detection and/or machine learning” and that “[m]ore education can supplement practical experience and vice versa” Pet. 9 (citing Ex. 1002 ¶ 94). Patent Owner “does not dispute Petitioner’s articulation of the level of ordinary skill.” Prelim. Resp. 29. 1 Gil Tahan, et al., Mal-ID: Automatic Malware Detection Using Common Segment Analysis and Meta-Features, Journal of Machine Learning Research 13, 949–979 (April 13, 2012) (Exhibit 1003). 2 Eitan Menahem, et al., Improving Malware Detection by Applying Multi- Inducer Ensemble, Computational Statistics & Data Analysis 53, 1483–1494 (2009) (Exhibit 1004). 3 U.S. Patent App. Pub. No. 2009/0254992 A1 (Exhibit 1005). For purposes of this decision, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’844 patent. B.” slip op. at 11

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

    “Petitioner asserts that “all claim terms should be given their plain and ordinary meanings.” Pet. 9. For its part, Patent Owner “agree[s] that no claim terms need be construed for this petition,” and that “all claim terms should carry their plain and ordinary meaning in light of the intrinsic record.” Prelim. Resp. 27. We find that no express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00594 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • BurdenInstitution denied

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 45–46; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 118, 120–127. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 119. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52–55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 123, 127. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 123) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Prior constructionPrior construction adoptedDecided for patent owner

    “used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim 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.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Certain terms recited in the challenged claims were construed during prior litigation of the ’451 patent, i.e., an ancestor of the challenged ’819 patent that Petitioner characterizes as “shar[ing] a near-verbatim written description with the ’819 patent”). Ex. 1023 (claim construction order in cases involving Microsoft and Apple); Ex. 2003, 5 (clarification of certain claim constructions on summary judgment); Pet. 8–9. Patent Owner advocates that we adopt such prior constructions in this proceeding. Prelim. Resp. 6. Although “Petitioner does not believe express claim construction is necessary at this time,” Petitioner takes the position that its asserted prior art “renders the challenged claims obvious under the district court’s constructions.” Pet. 10. And we agree with Patent Owner that the Petition “presents extensive arguments” that apply the district court’s constructions. See Prelim. Resp. 6 (citing Pet. 9–10, 12–20, 33). We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 8–10. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1, 16, 23, and 26, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2003, 5; Prelim. Resp. 7–8. Third, we construe “interactively variable duration information,” which is recited in each of challenged independent claims 1, 23, and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 10–12.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. (citing Ex. 1002 ¶¶ 13–18). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 5–6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,606,819
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00593 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–62 were unpatentable under the asserted §103 grounds.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 39; see also id. at 45–46 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt.” slip op. at 26

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “E. Real Parties in Interest Petitioner identifies Google LLC and YouTube, LLC as real parties in interest. Pet. 1. Patent Owner identifies Robocast, Inc., as a real party in interest. Paper 5, 2.” slip op. at 7

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner supports its proposal with testimony by Dr. Schmandt. See Ex. 1102 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Dr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1123, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 22 and 46, as well as dependent claim 45, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1123, 2–13; Ex. 2107, 5; Prelim. Resp. 9. For purposes of this Decision, we accord all other terms recited in the challenged claims their plain and ordinary meaning. See Ex. 1123, 17–20, 26–29 (court adopting plain and ordinary meaning of “plurality of accessible resources,” “content,” “without requiring user input,” “in accordance with said show structure,” “providing,” and “search results”); see Prelim. Resp. 8 (Patent Owner advocating that “any additional claim language be[] accorded its plain and ordinary meaning”).” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00592 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 and 63–67 were unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals. Second, we have also considered Mr. Schmandt’s testimony, and he provides no meaningful additional information to support reading Shimizu as Petitioner advocates. See Ex. 1002 ¶¶ 119, 121–128. In testimony not cited by Petitioner, Mr. Schmandt admits that “Shimizu does not appear to disclose further details about how duration information is specified or stored within its system, or whether such intervals between nodes can be changed.” Id. ¶ 120. This testimony undermines Petitioner’s position that Shimizu’s hypertext nodes include duration information. Mr. Schmandt elaborates in testimony that Petitioner cites, but does not explain: In a real-world implementation of the proposed combination, for example, the display time could have been specified within the node information structure 9 of Shimizu. I note that node information structure 9 in Shimizu also contains display procedure slot 62 (Fig. 6), which points to “a procedure program function used when the node in question is to be displayed on the screen.” (Shimizu, 6:52-55.) Shimizu thus contemplates that node information structure 9 may contain information about how the node will be displayed to the user, and as such, it would have been obvious that durational information could also have been included as part of node information structure 9. This durational amount could have been a default display time specified by the user, or a display time specific to the node in question, as explained above. * * * Shimizu itself clearly contemplates the ability to customize the display of nodes, and as explained above, node information structure 9 (Fig. 6) includes display procedure slot 62 which points to a program function or procedure used to display the node content, thus making clear that node information structure 9 can hold information about how the node will be displayed. Id. ¶¶ 124, 128. Mr. Schmandt’s testimony that Shimizu would need to be modified for its hypertext nodes to include duration information is strong evidence that Shimizu does not disclose hypertext nodes that include duration information. This testimony (from ¶ 124) also suggests that Shimizu’s predetermined intervals and times could be included in the procedure program function to which display procedure slot 62 points, rather than in the hypertext node, thereby providing additional evidence Shimizu’s predetermined intervals and times are included in structure other than hypertext nodes. See also Ex. 1003, 6:52–55.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web.” Pet. 6–7. Petitioner adds that “[s]uch a person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 7 (citing Ex. 1002 ¶¶ 13–17). Patent Owner proposes that a person of ordinary skill in the art “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems. A person of ordinary skill in the art would also have approximately 3-5 years of professional experience with these topics.” Prelim. Resp. 6. In addition, Patent Owner say that “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Id. Petitioner supports its proposal with testimony by Mr. Schmandt. See Ex. 1002 ¶ 16. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. See id. (Mr. Schmandt testifying that “Patent Owner’s proposed articulation is not meaningfully different” and that his “analysis, opinions and conclusions . . . would not change if Patent Owner’s articulation were applied”). Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We have reviewed the court’s claim-construction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1023, 16–17; Prelim. Resp. 10–12. Second, we construe “show structure of nodes,” which is recited in each of challenged independent claims 1 and 63, as well as in certain dependent claims, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1023, 2–13; Ex. 2007, 5; Prelim. Resp. 9. Third, we construe “interactively variable duration information,” which is recited in each of challenged claims 1, 11, 12, and 64, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1023, 22–23; Prelim. Resp. 12–15.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner that “[i]f anything, Petitioner’s cited passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42; see also id. at 59 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). Several considerations support this understanding of Shimizu, including both Shimizu’s disclosure and certain testimony of Petitioner’s expert, Mr. Schmandt. First, the passage that Petitioner cites from Shimizu’s Summary of the Invention refers to “an application program” that causes switching of nodes displayed “at predetermined intervals.” Ex. 1003, 5:11–14. The other passage that Petitioner cites similarly refers to “an application program” that may be displayed by reading node information within “a predetermined time.” Id. at 3:12–16. Although not cited by Petitioner, Shimizu also states: As described, the hypertext apparatus of the invention offers a user interface capable of putting into a desired order the links between the nodes to be managed and of manipulating the established link order. This makes it easy to create illustratively an application program allowing the display of node contents to be switched in a desired order and at predetermined intervals on the hypertext apparatus. Id. at 9:60–66. All of these passages are more consistent with Patent Owner’s position that the predetermined time or intervals are included in the application program rather than in the hypertext nodes. Petitioner does not provide persuasive argument or evidence to show that Shimizu should instead be read as describing hypertext nodes that include predetermined times or intervals.” slip op. at 27

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,965,932
• Google LLC / Youtube, LLC v. Robocast, Inc.Institution denied
  PTAB · Sep 18, 2023 · IPR2023-00591 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 22–36 and 39–45 because Petitioner did not show a reasonable likelihood that the asserted obviousness grounds would succeed.

  RulingsInstitution decision

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

    “passages appear to suggest to the contrary that these ostensible default duration parameters would instead be features of the application programs used for managing Shimizu’s alleged show structures.” Id. at 42–43; see also id. at 48 (“[T]he passages Petitioner relies on teach only that the ‘predetermined time’ would be associated with the application program used to display the nodes.”). We agree with Patent Owner. In its Summary of the Invention, Shimizu describes “mak[ing] it possible to build with ease an application program illustratively causing the display of the nodes to be switched in a specific order and at predetermined intervals.” Ex. 1103, with the predetermined intervals being included in the application program, rather than the hypertext nodes. Similarly, in its Description of the Related Art, Shimizu describes “mak[ing] it possible to create an application program that may be displayed on the screen by reading, from primary or secondary storage and within a predetermined time, the node information held by the nodes that are linked sequentially starting from a particular node.” Id. at 3:12–16 (emphasis added). This passage, too, is better read as disclosing that the predetermined times are included in the application program, rather than the hypertext nodes. Neither of Petitioner’s cited passages states that the hypertext nodes include predetermined intervals/times.” slip op. at 24

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Parallel petitionsNot reached

    “1 Petitioner filed a paper explaining its basis for filing multiple petitions challenging the ’451 patent and arguing that we should not exercise discretion to deny one of the petitions pursuant to the guidance in the Consolidated Trial Practice Guide (Nov. 2019) at 59 (“Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations.”). Paper 3. Patent Owner filed an objection to Petitioner’s filing of multiple petitions, arguing that we should deny one of them pursuant to the Trial Practice Guide’s guidance. Paper 8. Because we deny the Petition on the merits, we do not reach whether multiple petitions are appropriate to challenge the ’451 patent.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “possessed a bachelor’s in electrical engineering, computer science, or similar field, with at least two years of experience developing and implementing network-based computer systems, such as systems for storing and retrieving information over the Internet or communicating using the Web,” and “could also have qualified with more formal education and less technical experience, or vice versa.” Pet. 5 (citing Ex. 1102 ¶¶ 13–18). Patent Owner, without citing evidence, contends that a skilled artisan “would have the equivalent of a four-year degree from an accredited institution (usually denoted as a B.S. degree) in computer science, computer engineering or the equivalent, and experience with, or exposure to, topics in computer networking, multimedia, and web systems”; “would also have approximately 3–5 years of professional experience with these topics”; and “[a]dditional graduate education could substitute for professional experience, while significant experience in the field might substitute for formal education.” Prelim. Resp. 5–6. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art, and which is supported by expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). However, we do not see a substantial difference between the parties’ proposals. Thus, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Sophos Ltd. / Sophos Inc. v. Webroot Inc.Institution denied
  PTAB · Aug 14, 2023 · IPR2023-00528 · APJ Aaron W Moore · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 were unpatentable over Ideses, Mori, or their combination.

  RulingsInstitution decision

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

    “For these reasons, we find that Petitioner has failed to show that Ideses or Mori teaches or suggests “extracting a plurality of static data points from an executable file” and “generating a feature vector from the plurality of static data points using a classifier trained to classify the plurality of static data points based on a collection of data,” where “one or more features of the feature vector are selectively turned on or off based on whether a value of one or more static data points from the plurality of extracted static data points is within a predetermined range,” as recited in each independent claim.4 III. CONCLUSION We determine that Petitioner has not established a reasonable likelihood of proving that at least one challenged claim of the ’844 patent is unpatentable over the cited prior art. We accordingly do not institute an inter partes review.5 IV. ORDER For the reasons given, it is ORDERED that no inter partes review is instituted in this proceeding.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner that the claims are directed to the classification stage, as they require “extracting a plurality of static data points from an executable file” and “generating a feature vector from [that] plurality of static data points using a classifier” (emphasis added). The claims also recite that the feature vector generated from the static data points that were extracted from the executable file is used “to determine whether the executable file is harmful,” confirming that the claimed method is about classification of an executable file, not creation of a classifier. We also agree with Patent Owner that neither Ideses nor Mori teaches or suggests a classification method in which one or more features of a feature vector generated from a plurality of static data points extracted from a file being analyzed are selectively turned on or off based on the value of the static data point.” slip op. at 18

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,599,844
• Samsung Electronics Co., Ltd. v. Netlist, Inc.Instituted
  PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution

  The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.

  RulingsInstitution decision

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

    “Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “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.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6

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

    “competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33

  • Skill levelSkill level board ownOther

    “To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,093,417
• Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution denied
  PTAB · Aug 2, 2023 · IPR2023-00491 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 8, 9, 14, or 15 were unpatentable over Liu, Tuvell, and Kester.

  RulingsInstitution decision

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

    “For these reasons, we determine that Petitioner does not make a sufficient showing that its proposed combination of Liu, Tuvell, and Kester meets the limitations of independent claim 1 that include a “central server.” We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Liu, Tuvell, and Kester.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner

    “There are a number of difficulties with Petitioner’s position, which appears to be conceived with the aid of hindsight to reconstruct the claimed invention. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.”). First, Petitioner considers each of the mirrored servers in its conception of Liu also to correspond to the claim’s recited “threat servers.” Pet. 50. As Dr. Orso testifies, “Liu’s mirror servers are effectively identical to each other” and “even if Liu’s mirror servers could be interpreted as teaching the claimed threat servers . . . [,] there is no ‘central server’ in Liu’s peer-to-peer network of mirrored servers.” Ex. 2001 ¶ 70.” slip op. at 22

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “H. Discretion Under 35 U.S.C. § 314(a) As noted above, the ’721 patent is the subject of parallel proceedings in the form of the related litigation. Supra, § I.E. Patent Owner asks that we exercise our discretion to deny the Petition based on the state of the related litigation. Prelim. Resp. 4–21. Because we deny the Petition on the merits, we do not reach this issue.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent discipline, and at least two years’ worth of experience developing computer networking or network architecture, or a Master’s degree in a related field.” Pet. 9. Petitioner adds that, alternatively, a person of ordinary skill in the art “could have four or more years of work experience in computer networking and in the development of client-server systems.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Newman. Ex. 1003 ¶ 17. Patent Owner’s statement of the level of ordinary skill is generally similar, and supported with testimony by Dr. Orso, who characterizes the parties’ respective positions as having “minor variations.” Prelim. Resp. 27; Ex. 2001 ¶¶ 39–42. According to Patent Owner, a person of ordinary skill in the art “would have had a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have 2-3 years of practical work experience in the general fields of electrical engineering, computer science, networking communications, and/or device and network security.” Prelim. Resp. 27. Patent Owner adds that “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Id. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion not to institute inter partes review if we were to adopt Patent Owner’s proposal. See Prelim. Resp. 27 (Patent Owner stating that “[a]lthough Patent Owner’s [person of ordinary skill in the art] definition differs slightly from Petitioner’s, Patent Owner’s positions and arguments do not change based on which [person of ordinary skill in the art] definition the Board applies”); Ex. 2001 ¶ 42 (Dr. Orso testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions.”).” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,413,721

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.