• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–5 were not proven unpatentable: Athas does not show the same packets are received, modified, and forwarded; neither obviousness combination teaches execution in response to the client’s execution of the second script.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). For our Institution Decision, we adopted Petitioner’s formulation. Institution Dec. 11. Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’s explanation,” he bases his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Final Written Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner 6 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. and used previously in our Institution Decision. We find that this formulation is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “as “the number of packets” intercepted in limitation 1a (see PO Resp. 6–7). Petitioner responds that resolving this argument is not necessary. Pet. Reply 1. We find that whether claim 1 requires the packets intercepted by the network appliance in limitation 1a to be the same packets involved in limitations 1b–1d, Petitioner has not persuasively shown that any same number of packets in Athas that are received at proxy platform 101 are then modified and forwarded as required by limitations 1b–1d, for the reasons discussed below. We agree with Patent Owner that the number of packets in limitations 1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  • BurdenNot shown unpatentable

    “1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23

  Patent outcomesUS 8,924,457 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,924,457
• Bright Data Ltd. v. Oxylabs, UabNo claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00185 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1–19 were not proven unpatentable; the Board found the asserted WebShield and Hallak grounds failed on script-removal and execution sequencing, and the Kothari combination lacked motivation.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Post-institution, Patent Owner proposes two claim constructions. PO Resp. 7–8. Patent Owner proposes that we construe the term “embedded script,” as defined in the ’498 patent, as “a script that is included or incorporated by reference into a markup language description of a web page and executable by a browser rendering that web page.” Id. at 8 (citing Ex. 1001, 3:23–26). According to Patent Owner, a “script” is “a sequence of machine-readable instructions.” Id. (citing Ex. 1001, 3:21–23). Patent Owner proposes that we construe “executing . . . the removed embedded script” as requiring the removal of the script embedded in the web page to take place before the script is executed. Id. This limitation is recited in claim 1 and in each of the other independent claims. Ex. 1001, 11:43–46 (claim 1), 12:17–20 (claim 10); 12:58–63 (claim 19). Petitioner responds that “[t]hese claim terms have already been construed by the district court and those constructions are not disputed in this proceeding.” Pet. Reply 2. We find that these undisputed constructions are supported by the record before us. We, therefore, adopt them for this Decision. We do not find it necessary to expressly construe any other terms for this Decision.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’ explanation,” he bases 7 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’498 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree that Petitioner’s citations to WebShield do not disclose the sequence of operations called for by the claims. WebShield expressly states that “the HTML page, embedded JavaScript files and embedded CSS files will be parsed and executed to create the DOM data structures of the webpage.” Ex. 1008, 5 (emphasis added). As Dr. Almeroth explains, “WebShield does not remove an embedded script and then subsequently execute the removed embedded script. . . . WebShield . . . executes the embedded JavaScript without first removing that JavaScript from the web page, and only subsequently generates ‘the new HTML page [that WebShield] transfers to the client browser T(R).’” Almeroth Decl. ¶ 78 (quoting Ex. 1008, 6) (final alteration in original). We are not persuaded by Dr. Williams’s testimony that WebShield teaches or suggests this limitation. See Williams Decl. ¶¶ 132–137. His testimony does not address the claimed sequence required by the claims and, in fact, quotes WebShield’s description of parsing and executing the embedded JavaScript files to create the DOM data structures relied on by Patent Owner and Dr. Almeroth. See id. at ¶ 136 (quoting Ex. 1008, 5).” slip op. at 21

  Patent outcomesUS 9,503,498 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,503,498
• Google LLC v. Security First Innovations, LLCInstitution denied
  PTAB · Jun 6, 2024 · IPR2024-00213 · APJ Daniel Kazhdan · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–10 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “inter partes review, see 35 U.S.C. § 314, and she delegated that authority to the Board. See 37 C.F.R. § 42.4(a). The Board may not authorize an inter partes review unless the information in the petition and the preliminary 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). We determine that the Petition in this case does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use. A higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶ 40). The Preliminary Response does not provide a description of the person of ordinary skill in the art or dispute Petitioner’s description. Patent Owner’s expert “accept[ed] Dr. Bhattacharjee’s proposed qualifications of a [skilled artisan]” for purposes of his declaration. Ex. 2003 ¶ 20. For purposes of assessing institution, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding. C. Claim construction slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “The Preliminary Response argues that limitations [1A] and [1B-2] “require storing two or more shares generated from a dataset on two or more physical storage devices.” Prelim. Resp. 5. This, purportedly, is “a central feature” of the invention. Id.; see generally id. at 4–7. The relevant limitations recite: “[1A] a plurality of physical storage devices storing thereon a plurality of shares, the plurality of shares being associated with at least one session key used to secure a dataset” and a secure storage system configured to “[1B-2] generate the plurality of shares for storage on the plurality of physical storage devices by performing a securing operation on the dataset received from the client device and distributing the dataset in the shares.” See Ex. 1001 98:3–6, 98:12–15. As the Preliminary Response notes, the Federal Circuit has repeatedly held that “‘a plurality of’ means ‘at least two of.’” SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir. 2021) (citing cases); Prelim. Resp. 5. As the Preliminary Response further notes, the Petition itself seems to interpret the claims as requiring storage on at least two physical storage devices. Prelim. Resp. 7. Specifically, the Petition argues that “Dickinson-Takeda . . . stores encryption results . . . on at least two of storage devices D1-D4.” Id. (quoting Pet. 68); see Ex. 2003 ¶ 19. Implicit in this is the need for at least two separate physical storage devices. Thus, we conclude that the claims require storing the shares among two or more physical storage devices.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “this decision we construe limitations [1A] and [1B-2] together to require storing two shares among at least two physical storage devices. Petitioner never addresses this requirement, and we find this to be a fatal flaw. According to Petitioner, Takeda teaches limitations [1A] and [1B-2] as follows: “Takeda’s technique involves dividing plaintext – which is any non-encrypted (i.e., unciphered) information – into blocks, ciphering different blocks using different ‘ciphering attributes’ (e.g., ciphering keys and/or ciphering algorithms), and outputting the ciphered blocks with the ciphering attributes.” Pet. 10; see generally id. at 10–16, 28–31, 39–40. Patent Owner responds that “Takeda’s blocks are stored together in a single storage device,” and this does not disclose or suggest storing the shares on at least two physical storage devices. Prelim. Resp. 8; see id. at 8–9 (citing Ex. 2003 ¶¶ 51–53). We agree with Patent Owner. Petitioner has not shown a reasonable likelihood that Takeda discloses or suggests storing data on physically separable storage devices. The Petition points to Takeda’s teaching that the data is “divided into blocks.” Pet. 11. As Patent Owner notes, Takeda teaches that these blocks are all stored on a single, physical device. Prelim. Resp. 8. Specifically, Takeda teaches that “[t]he ciphertext is stored in the removable recording medium 39 or the storage device 37.” Ex. 1008 ¶ 92.5 We determine that Takeda does not teach or suggest storing this data in at least two separate media, at least two separate storage devices, or at least one of each. Correspondingly, Takeda’s Figures show data blocks next to each other—i.e., on one physical device. See id. at Figs. 1–4. The Petition does not suggest that Ophir teaches storing shares among different physical storage devices. As the Petition itself notes, Ophir seems to use a single “mediator [to] provide[] secure virtual storage to data clients.” Pet. 9 (quoting Ex. 1007 Abstract) (emphasis omitted).” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,338,140
• Google LLC v. Security First Innovations, LLCInstituted
  PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution

  The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “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 discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2

  • BurdenDecided for petitioner

    “The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,452,854
• Google LLC v. Security First Innovations, LLCInstituted
  PTAB · May 23, 2024 · IPR2024-00214 · APJ Stephen E Belisle · IPR · Institution

  The Board instituted IPR on claims 1–10 and all petition grounds, finding a reasonable likelihood of success on Foster grounds for claims 1–3, 7, and 8 and claims 4–6, 9, and 10.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes 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. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’609 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’609 patent on all grounds raised in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’609 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Bhattacharjee (Ex. 1003 ¶¶ 37–38).” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “repeated, would not necessarily indicate that the chunks, each encrypted with a separate share key, would be again encrypted using the session master key (the cryptographic operation Petitioner contends would be reordered/repeated).” Prelim. Resp. 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been “pointless:” Indeed, [the skilled artisan] would recognize that encryption with the alleged first key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged first key (i.e., the session master key) would render the splitting and encryption of the alleged first key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 101–105. Thus, we find Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) more persuasive than Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 101–105) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Versions.” slip op. at 39

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for petitioner

    “Here, however, Petitioner does not insist any construction is incorrect. Rather, Petitioner presents alternative rationales for why the claims are unpatentable, stating that the Petition demonstrates “unpatentability regardless of which proposed construction is correct.” Pet. 9. Even though some stated rationales are based on Patent Owner’s constructions in the District Court Case, the Petition complies with the rule because it explains how the Challenged Claims are to be construed under the alternative challenges. See 37 C.F.R. § 42.104(b)(3). The rule “does not require Petitioner to express its subjective agreement regarding correctness of its proffered claim constructions or to take ownership of those constructions.” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00084, Paper 14 at 11 (PTAB Apr. 25, 2018).” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,068,609
• Manufacturing Resources International, Inc. v. Samsung Electronics Co. Ltd.Institution denied
  PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Samsung Electronics Co., Ltd. v. Almondnet, Inc.No claims unpatentable
  PTAB · Feb 2, 2024 · IPR2022-01259 · APJ Charles J Boudreau · IPR · Final written decision

  The Board held claims 35–51 not unpatentable because the asserted combinations did not show that the claimed computers automatically authorize a distinct third-party second media property to allow ad display.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Having considered the parties’ arguments, we agree with Petitioner that the recited “system” of claim 35 does not necessarily exclude a “third-party second media property.” As Petitioner points out, claim 35 uses the open-ended transitional phrase “comprising,” such that the recited “system comprising one or more computers” may include components other than the recited “one or more computers.” See Pet. Reply 1 (citing CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Moreover, we agree with Petitioner that the phrase “programmed to implement a method of directing electronic advertisements” more naturally modifies “one or more computers,” rather than “system.” Id. at 3. Nonetheless, it is clear from the plain language of claim 35, as well as from the prosecution history of the related ’745 patent, that the third-party second media property must be distinct from such “one or more computers.” Petitioner’s repeated use of the abbreviation “TPSMP” obscures the fact that claim 35 does not simply recite a “second media property” but instead specifically recites a “third-party second media property.” Ex. 1001, 16:18–19 (emphasis added). Highlighting the significance of the modifier “third-party,” as Patent Owner points out, is the fact that that modifier was added to “second media property” in the phrase “automatically electronically authorizing, with at least one of the computers, a third party second media property to allow display, to the electronic visitor when later visiting the second media property, of an advertisement” in an Examiner’s amendment during prosecution of the ’822 patent’s grandparent ’286 application to avoid certain prior art, and the prosecution record of the ’286 application reflects that this amendment was made to make it clear that the recited “authorizing is being done of an unrelated site.” Ex. 2005, 58; see PO Resp. 10–11. More particularly, as Patent Owner points out, the applicant stated in the cited examiner interview report that “the claim structure already made [it] clear” that “the authorizing is being done of an unrelated site . . . because the phrase ‘authorizing’ a site does not seem to cover a site deciding something on its own,” but that the amendment to specify a “third party second media property” made that requirement “explicit.” Ex. 2005, 58; see PO Resp. 7–8 (quoting the same).” slip op. at 23

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s articulation of the level of ordinary skill in the art, minus the phrases “at least” modifying the education and “or more” modifying the number of years of experience. As we explained in our Institution Decision, although Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art, inclusion of such qualifiers render the articulation vague by being open-ended thus encompassing the level of education and experience of an expert, someone with more than ordinary skill in the art. See Dec. 12. Thus, in summary, we find that one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent, and two years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field, where more education could supplement practical experience and vice versa.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Having considered the parties’ respective contentions in light of the evidence of record, we conclude that Petitioner has not established by a preponderance of the evidence that claim 35 is unpatentable over the combination of Perry, Wilson, and Bronson. In particular, we are not persuaded that the cited prior art teaches or suggests “a system comprising one or more computers programmed to implement a method . . . comprising: . . . automatically electronically authorizing a third-party second media property to allow display . . . of an advertisement correlated with the profile-attribute information received about the visitor.” Although Figure 1 of Perry depicts a “system” that includes computers programmed to implement a method of distributing advertisements to users over the Internet, we are not persuaded that any component in that system implements a method that includes “automatically electronically authorizing a third-party second media property” to display such advertisements. As Patent Owner points out, Petitioner identifies “Internet publisher computer systems 131 and 132” and “advertising service company computer system 140 comprising one or more CPUs 141” as the recited “one or more computers.” Pet. 7; PO Resp. 11. Although there is no dispute that Publisher Systems 131 and 132 and ASC 140 are computers, we find that neither satisfies the remaining limitations of claim 35, particularly because neither “automatically electronically authoriz[es] a third-party second media property” to display advertisements. As we explain in our claim construction discussion above, we are not persuaded by Patent Owner’s arguments that the recited “system” necessarily must exclude the “third-party second media server.” See supra § III.C. Nonetheless, the third-party second media server still must be separate and distinct from the “one or more computers programmed to implement [the recited] method,” lest the modifier “third-party” be rendered meaningless.” slip op. at 54

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Further, Patent Owner did not present Mr. Sherwood as an expert on patent law or claim drafting, and we decline to give substantial weight to his testimony on this issue that is ultimately a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (ruling that the interpretation of patent claims is a matter of law to be determined exclusively by the courts). Still further, Petitioner’s counsel conceded that the formatting of the claim is not dispositive. Tr. 14:14–18.” slip op. at 26

  Patent outcomesUS 8,200,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,200,822
• International Business Machines Corporation v. Digital Doors, Inc.Institution denied
  PTAB · Jan 11, 2024 · IPR2023-00972 · APJ Elizabeth M Roesel · IPR · Institution

  The Board denied institution of IPR challenging claims 31, 36, and 41, exercising § 314(a) discretion under Fintiv because the merits were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution. we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set). Id. ¶ 49 (emphasis added). Petitioner presents no compelling argument that Merenda’s disclosure of storing data entered in fields pre-designated as “private” separately from data entered in fields pre-designated “public” discloses or suggests the extracting step.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience working in the field of data storage systems and data security as of November 13, 2000.” Pet. 6 (citing Zadok Decl. ¶¶ 114, 115). Petitioner adds that “[l]ess professional experience can be substituted by additional education, and vice versa.” Id. Patent Owner chooses not to state a position on this issue. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art as it is consistent with the art before us.” slip op. at 13

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Ex. 1006 ¶ 23 (emphasis added). It does not appear that Petitioner is relying on Merenda’s “sophisticated” notion of data parsing to teach or suggest the extracting limitation. See Pet. 31 (quoting from Merenda paragraph 23, describing only “simplistic” parsing). In any event, we agree with Patent Owner that “[t]his more sophisticated version of ‘parsing’ doesn’t remove anything, it combines data fields.” Prelim. Resp. 34; Easttom Decl. ¶ 55. Merenda’s “simplistic” version of parsing fares no better. Prelim. Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set).” slip op. at 19

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,958,268
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10

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

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2

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

    “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 “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). 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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). 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 challenged patent and 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§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500
• Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01092 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution for claims 23–31 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 18

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

    “the Fintiv factors. As discussed above, we have determined that factors 1–5 weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling evidence of unpatentability under factor 6. We therefore conclude that the evidence of record favors exercising our discretion to deny institution of an inter partes review. V. CONCLUSION Upon consideration of the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and the accompanying evidence, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 23–31 of the ’500 patent. VI. ORDER For the foregoing reasons, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 41

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

    “device.” Instead, the output current in Okada is determined in steps 6–12 of the flowchart, where the receiver transmits and the transmitter receives power consumption information derived from a code stored on the device being charged. Prelim. Resp. 28–29; Ex. 1005 ¶¶ 69–73. The transmitter adjusts the power to one of three levels, a one-time selection that remains for the duration of the charging. Prelim. Resp. 28–29. We, therefore, do not find compelling evidence that Okada meets this claim element. Nor are we convinced by Petitioner’s “modifications” to Okada. Pet. 58 (referring to annotated Fig. 3). In Petitioner’s modified Okada system, the receiver circuit would “periodically communicate information corresponding to an output voltage or current of the receiver rectifier circuit to cradle 4.” Id. (emphasis omitted). Petitioner points to the testimony of its expert, Dr. Baker. Id. (citing Baker Decl. ¶ 210). We do not find that there is compelling evidence that Okada’s “carrier wave” would have enabled cradle 4 to ‘regulate in a closed loop manner the output voltage or current of the receiver rectifier circuit during the charging or powering of the portable device.’” Id. (emphasis omitted). We find Dr. Baker’s testimony confusing and, ultimately, not compelling. Instead of setting forth his support for his opinion, he incorporates by reference over 100 pages of his prior testimony. See Baker Decl. ¶ 210 (incorporating prior analysis for limitations 23(a)- 23(h) in Sections IX.A.1(a)–1(h) and analysis and discussions in Sections VIII.A–E). Patent Owner cites several instances of this lack of particularity in the Petition, and we agree. See Prelim. Resp. 22–25. Dr. Baker’s testimony similarly lacks focus and deprives us of a fair opportunity to assess the basis for his testimony. Our Consolidated Trial Practice Guide (Nov. 2019)9 provides the following guidance on presenting cases and warns against lack of focus: Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented, and can otherwise cause meritorious issues to be missed or discounted. Thus, parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record. Id. at 39 (emphasis added). Petitioner has failed to follow this guidance throughout its presentation. As a consequence, we find it difficult to discern compelling evidence in Petitioner’s argument for why Okada should be modified to provide closed-loop operation.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “required by the claim would require the transmitter to regulate. But the Okada drive circuit . . . as described is not designed for this type of regulation.” Prelim. Resp. 30. As Patent Owner explains, “Okada teaches simply choosing one of three power levels through the use of a multi-tapped primary side coil.” Id. Modifying Okada would require “additional circuitry and control mechanisms required for closed loop regulation.” Id. Petitioner fails to provide compelling evidence that a person of ordinary skill would have modified Okada’s open-loop circuitry and controls employing a multitap helical coil, described supra, for closed-loop operation such as that disclosed in Berghegger, which operates on entirely different principles. We are not convinced that Petitioner provides a sufficiently compelling motivation to import closed-loop operation into Okada’s open-loop system. The Supreme Court has warned against “slipping into use of hindsight.” KSR, 550 U.S. at 421(quoting Graham, 383 U.S. at 36). In this regard, the Federal Circuit has said that “combinations that change the basic principles under which the [prior art] was designed to operate, . . . may fail to support a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 758 (Fed. Cir. 2015) (quoting In re Ratti, 46 CCPA 976, 270 F.2d 810, 813 (1959), In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (internal quotation marks and cites omitted) (alterations in original). For the reasons given, we are not persuaded that Petitioner presents a compelling reason to modify Okada for closed-loop operation in the manner suggested by Dr. Baker.” slip op. at 33

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,201,500

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.