• Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentable
  PTAB · Jan 24, 2025 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1, 3–7, 11–13, and 15–17 over Sinharoy; claims 2 and 10 over Sinharoy and Xu; and all challenged claims under the listed Tang grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the Institution Decision we determined Petitioner’s description was consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of that decision, we adopted Petitioner’s proposal in the Institution Decision. Inst. Dec. 10–11. Now Patent Owner argues for a “more precise definition” offered in the Horst Declaration and adopted in the Brogioli Declaration. PO Resp. 6–7 (citing Ex. 2002 ¶ 25). effects any patentability issue. The only difference between the two is the addition of “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems” as the experience level of a person of ordinary skill in the art. Compare Inst. Dec. 10–11 (citing Pet. 8) and Ex. 1007 ¶ 30 and Ex. 2001 ¶ 25. No mention of the difference between the two levels of ordinary skill is made in any of the papers filed. Regardless, inasmuch as both experts agree to the level of ordinary skill, we find the experience associated with the level of ordinary skill is “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems.” The level of education is unchanged from the Institution Decision.” slip op. at 14

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

    “We are not persuaded to change our preliminary construction. First, Patent Owner misstates our construction of “single caching agent” by adding the language “each associated with a corresponding one of the plurality of cores.” That language is present in the claim as a separate limitation. See Section I.E (limitation [1g]) above. This added language is not present in our preliminary construction, which states only that a “single caching agent” means “one caching agent for the processor, which may be formed from distributed portions.” Inst. Dec. 12. Thus, that each “single caching agent” is “associated with a corresponding one of the plurality of cores” is a separate limitation. Second, none of the above citations to the ’895 patent is contrary to our construction. Our construction states that a “single caching agent” is recited. That is what is repeated in Patent Owner’s citations. Third, the ’895 patent’s description of Figure 6 explains that a “single caching agent” may be formed from distributed portions, as do the claim limitations in question. See Ex. 1001, 6:35–37. Other than tacking on the second recitation of “distributed portions” to the “single caching agent” portions” part of our construction is incorrect. The Brogioli Declaration repeats the above citations to the ’895 patent” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Medtronic, 891 F.3d at 1380 (citations, quotations, and alterations omitted). The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot. slip op. at 41

  • ExcludeMotion to exclude, deniedDenied

    “The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot.” slip op. at 41

  Patent outcomesUS 9,575,895 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,575,895
• Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentable
  PTAB · Nov 20, 2024 · IPR2023-01164 · APJ James P Calve · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–7 and 10–20 over Morris and Ray, and claims 8, 9, and 18 over Morris, Ray, and Cox.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’375 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 27 n.8. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “Patent Owner asserts that the claim term “exercise use data” needs to be construed to resolve the issues raised by Petitioner. PO Resp. 4. Patent Owner asserts that exercise use data is “data that would represent an amount of exercise of the user.” Id.; Ex. 2004 ¶ 32. Petitioner disagreed with this proposed construction in its briefing (Pet. Reply 1–5) but adopted it during the oral hearing (Tr. 14:12–15:17). The parties also agree that “exercise use data” includes time, distance, and calories of a user exercising on an exercise apparatus. PO Resp. 4–5, 14; Pet. Reply 3–4. For purposes of this proceeding, we apply Patent Owner’s proposed construction. For the reasons explained below, we determine that Petitioner has shown that the challenged claims are unpatentable even under Patent Owner’s narrower construction. As a result, we do not need to construe this claim term further.” slip op. at 9

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

    “Patent Owner does not dispute Petitioner’s contentions. See PO Resp. We find that Petitioner has established that a skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and would have had a reasonable expectation of success. See Pet. 16–19, 27–28; Ex. 1002 ¶¶ 137–147, 161–163; Ex. 1004, 5:27–29, 7:11–22, 9:55–57; Paper 8 (Scheduling Order), 9 (cautioning Patent Owner that any arguments not raised in the response may be deemed waived).” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 45–52), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosures. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim as discussed above. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 29

  Patent outcomesUS 10,796,375 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,796,375
• Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentable
  PTAB · Nov 20, 2024 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Morris and Ray; the Board did not reach the alternative Ray–AAPA and Yi grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’340 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but we agree with Petitioner that these differences are immaterial to this proceeding. See Pet. Reply 29 n.12. Moreover, our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 10

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

    “Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4. According to Patent Owner, the Specification of the ’340 patent defines this term. Id. at 4–5 (citing Ex. 1001,6 1:43–46, 6:33–34, claims 4, 5, 17; Ex. 2004 ¶ 33). In its briefing, Petitioner disagrees with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 1–2; see id. at 1–5 (further contesting Patent Owner’s proposed construction). However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the Challenged Claims are unpatentable even under Patent Owner’s narrower construction.” slip op. at 12

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

    “We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit 8 By not challenging Petitioner’s contentions as to motivation to combine and reasonable expectation of success, we also find that Patent Owner has waived any argument contesting these contentions. See Paper 8 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”). exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed for the reasons explained by Petitioner, as set forth above.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “are contradictory and we also disagree with Patent Owner that Ray teaches away from “maintain[ing] communication between the exercise apparatus and the remote location while the user is determined by the controller not to be engaged with the operating member” as recited in claim 7. On the former point, we agree with Petitioner that Patent Owner “improperly equates generation and reporting of exercise use data with maintaining a connection with a remote location.” See Pet. Reply 20. Petitioner previously asserted that generation and reporting of the data would stop when Ray does not detect a user, but this does not mean that the connection would also be stopped. On the latter point, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)); see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must “criticize, discredit, or otherwise discourage the solution claimed”). Patent Owner fails to point to anything in Ray that discourages or would otherwise lead one of ordinary skill in the art away from maintaining a connection with a remote location when exercise use data is not reported at that precise moment. Rather, Petitioner provides a reason with rational underpinning as to why one of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to maintain the connection—“to avoid delays in trying to re-establish the connection once the user had come back.” Pet. 39. That position is supported by the testimony of Mr. Rawls. Ex. 1002 ¶ 186.” slip op. at 53

  Patent outcomesUS 11,227,340 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,227,340
• Peloton Interactive, Inc. v. Johnson Health Tech Co., Ltd.All claims unpatentable
  PTAB · Nov 20, 2024 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Morris and Ray, with claims 10, 11, 13, and 20 also unpatentable over Morris, Ray, and Cox.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same level of ordinary skill in the art, except that Patent Owner states that the industry experience would have been “in analyzing and/or designing exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” PO Resp. 15–16. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’227 patent. Accord Inst. Dec. 8. Patent Owner’s proposal adds “analyzing” and removes “cardiovascular,” but these differences are immaterial to this proceeding. See Pet. Reply 28 n.10. Moreover, all of our analysis in this Decision would remain the same under Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 9

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

    “Patent Owner contends it means “data that would represent an amount of exercise of the user.” PO Resp. 4–6. According to Patent Owner, the Specification defines this claim term. Id. at 4–5 (citing Ex. 1001, 51:37– 40:59–6:4). In its briefing, Petitioner disagreed with Patent Owner’s proposed construction, arguing that it is “overly narrow . . . and arbitrarily excludes other forms of ‘exercise use data.’” Pet. Reply 2–4. However, during the oral hearing, Petitioner adopted Patent Owner’s proposal. Tr. 14:12–15:17. For purposes of this proceeding, we apply Patent Owner’s narrower construction and assume that “exercise use data” is “data that would represent an amount of exercise of the user.” We do not need to further construe this term because Petitioner shows that the challenged claims are unpatentable even under Patent Owner’s narrower construction of it.” slip op. at 10

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

    “Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C); see also id. at 26–27 (asserting that “including multiple sensors in treadmills was a routine and well-known task”) (citing Ex. 1002 ¶¶ 159–162). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ treadmill to add both “Ray’s motivational image that showed a thinner image of the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing that detection of a user’s presence could provide benefits, including motivation (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25)), 41 (arguing that data transmission was “a well-known and routine task” (citing Ex. 1002 ¶¶ 188–189)). Patent Owner does not dispute these contentions. See PO Resp. We find that Petitioner has established that an ordinarily skilled artisan would have been motivated to improve Morris’ treadmill by adding Ray’s camera, software instructions for validating user exercise data, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success. See Pet. 16–18, 26–27; Ex. 1002 ¶¶ 135–138, 140–145, 161, 189; see also, e.g., Ex. 1004, 5:27–29, 7:11–22, 9:55–57.” slip op. at 22

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We have considered the testimony of Mr. van der Weide, who agrees with Patent Owner (see Ex. 2004 ¶¶ 35, 60–71), but we give his testimony on these points little weight. Mr. van der Weide discusses Mr. Rawls’ testimony, but he does not meaningfully discuss Ray’s disclosure. See id. As a result, he does not reconcile his opinions with the apparently conflicting portions of Ray. In addition, Mr. van der Weide’s testimony is conclusory because he does not identify evidence or reasoning sufficient to support his opinion that Ray fails to teach or suggest these aspects of the claim. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 32

  Patent outcomesUS 10,032,227 unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 10,032,227
• Champion Laboratories, Inc. / First Brands Group, LLC v. Hengst SEInstituted
  PTAB · Sep 18, 2024 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Institution

  The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on claim 1 over Honermann and Cline.

  RulingsInstitution decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Pet. 5–6 (citing Ex. 1003 ¶ 50). Petitioner further states “that more education could compensate for less experience and vice versa.” Id. at 6. Petitioner’s position is, therefore, consistent with Patent Owner’s proffered level of skill in the art which reflects less education and more experience in substantially the same fields. Specifically, Patent Owner asserts that such a skilled artisan “would have at least a bachelor’s degree in mechanical or automotive engineering and/or five or more years of experience in the automotive industry designing, developing, testing, and engineering automotive components or practical experience servicing, assembling, repairing, and/or developing internal combustion engines and/or engine oil filters.” Prelim. Resp. 4. On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). A more specific definition is not necessary for purposes of deciding whether to institute review. To the extent a more specific definition is required, however, we adopt Patent Owner’s definition because it is consistent with the disclosures of the asserted prior art references. We note, however, that we would reach the same conclusion under either parties’ definition.” slip op. at 7

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

    “Petitioner asserts that all non-“means” terms in the challenged claims should be afforded their plain and ordinary meaning, and that the “means” limitations recited in claims 1 and 15 should not be construed as means-plus- function terms pursuant to 35 U.S.C. § 112(6). Pet. 7. According to Petitioner, claims 1 and 15 include additional limitations that denote structure for those “means” limitations and furthermore do not recite a function corresponding to the recited means. Id. Patent Owner asserts that “the Board need not make a determination on claim construction in assessing whether to institute” trial. Prelim. Resp. 5. After review of the preliminary record, we determine that no claim terms require an express construction for purposes of institution. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”).” slip op. at 8

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

    “2. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” As Petitioner acknowledges, a Japanese-language version of Yokoyama was cited in an IDS without an English translation. Pet. 19; Ex. 1002, 34 (indicating that an English translation was not provided by virtue of the absence of a checkmark in the “T” column on the far right of the PTO/SB/08a form).4 The Yokoyama reference relied on in the Petition (Ex. 1008) however, includes an English language translation of the text in 4 It is also not readily apparent that Patent Owner complied fully with the “Content Requirements for an Information Disclosure Statement” as set forth in MPEP § 609 in its IDS submission dated March 30, 2015. Specifically, § 609.04(a)(III) states that “[e]ach information disclosure statement must further include a concise explanation of the relevance . . . of the information listed that is not in the English language.” (italicized emphasis added, underlining in original); see also § 609.01 B.3 (stating this requirement). It does not appear that any concise explanation was filed with respect to either Japanese reference filed in the IDS. See Ex. 1002, 13–38 (IDS documents pertaining to Yokoyama reference); Semiconductor Energy Laboratory Co. v. Samsung Electronics Co., 204 F.3d 1368, 1376 (Fed. Cir. 2000) (“[A]lthough MPEP Section 609[] allows the applicant some discretion in the manner in which it phrases its concise explanation, it nowhere authorizes the applicant to intentionally omit altogether key teachings of the reference.”). addition to the Drawings that also appear in the untranslated Japanese-language version of Yokoyama submitted during prosecution. Compare Ex. 1007 (containing Japanese text with Figures 1–7c), with Ex. 1008 (containing English text along with Figures 1–7c). As such, the Yokoyama reference relied on in the Petition––being in English––contains roughly ten pages of more readily discernible information than the Japanese-language version of this reference submitted during prosecution. Significantly, Petitioner relies on textual disclosure in the English-translated version of Yokoyama in its challenges. Pet. 28–51, 54, 58, 59 (citing Ex. 1008 repeatedly). Such English-translated disclosure was not previously before the Examiner. Ex. 1002, 13–38. In view of this additional disclosure before us in English, i.e., disclosure that was not presented previously to the Office, we find that the English translated version of Yokoyama relied on here (Ex. 1008) is not “the same or substantially the same art” that was previously presented to the Office (Ex. 1007).” slip op. at 10

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

    “discretionary denial, we must also consider whether the Petition presents compelling merits. IPR2022-01242, Paper 23 at 4–5. As set forth above, we have considered the circumstances and facts before us in view of Fintiv factors 1–5, and determine that: Factor 1 is neutral, Factor 2 weighs heavily against discretionary denial, Factor 3 is neutral, Factor 4 weighs against discretionary denial, and Factor 5 weighs in favor of discretionary denial. Factors 1–5, considered as a whole, collectively weigh against exercising discretion to deny institution. As such, we need not undertake a “compelling merits” analysis as set forth under CommScope. The Merits Even though we do not consider here whether the merits are “compelling,” we do consider the merits of the Petition under Fintiv factor 6. As set forth below, we determine that Petitioner has satisfied the reasonable likelihood standard for purposes of institution. Such satisfaction weighs further against discretionary denial of the Petition.” slip op. at 19

  Claim constructionDiscretionary denialcites Phillips
  Patents in suitUS 9,023,203
• Netskope, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · Aug 19, 2024 · IPR2023-00459 · APJ James P Calve · IPR · Final written decision

  Claims 1–7 and 10–31 are unpatentable under §103 over the asserted combinations involving Chandra or Keohane.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 3. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent, but our decision would be the same under either formulation.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “claims 1, 15, 21, and 27 recite methods in which a first network security appliance of a CSF receives network traffic to inspect, determines whether the traffic was transmitted from a second network security appliance that executed security operations on the traffic, determines network security operations for the first network security appliance to execute based on any security operations executed by the second network security appliance, and executes operations on the traffic. Ex. 1001, 10:58–11:17, 12:31–60, 13:20– 47, 14:13–37. As claimed, network traffic may travel in one direction from a second network security appliance to a first network security appliance. The ’825 patent describes unidirectional traffic as “one embodiment” of the CSF. A first network security appliance receives incoming network traffic and determines if the incoming network traffic is transmitted from a second network security appliance based on the source address of the traffic and determines operations that the second network security appliance executed. Ex. 1001, 2:48–56. In this embodiment, traffic travels in a single incoming direction between network security appliances. Tr. 30:22–31:18. The ’825 patent also describes the “cooperation” in a CSF as “[t]he network packet carrying the flag is transmitted to another member node at the next hop.” Ex. 1001, 6:28–34 (emphasis added); id. at 8:3–8. Traffic always flows from one hop to a next hop along the same path between root 220 at the edge of the network and each particular endpoint (leaf) shown in Figure 2 below. Traffic does not flow along different interconnected paths when it travels from root 220 to an endpoint leaf 240a–240d, 250 as Patent Owner asserts is required of a CSF. PO Resp. 13–15. Figure 2 is “an exemplary topology of a cooperative security fabric (CSF)” with Patent Owner’s annotation of network traffic paths. Ex. 1001, 2:29–31; PO Resp. 16. Traffic travels along a single path from root 220 to branch 230a to leaf 240a to the blue end node. Traffic travels along a single path from root 220 to leaf 250 to the red end node. Traffic from the green node travels along a single path to leaf 240d to branch 230b to root 220. Network security appliances only cooperate along a single red, green,” slip op. at 10

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

    “(3) Analysis We agree with Petitioner that “the claims only require two appliances and traffic to go from one appliance to the other.” Reply 11. Nothing in the claims or element 1[a] requires network traffic to originate from outside the private network or the CSF. Dr. Black testifies that the background of the ’825 patent describes a need for a CSF to coordinate operations performed on network traffic that is “transmitted to/from the network” to avoid or reduce redundant operations among members of the CSF” (Ex. 2004 ¶¶ 44, 50), but Dr. Black describes the claimed network fabric and CSF entirely in the context of controlling network traffic transmitted within the enterprise network topology 200 as illustrated in Figure 2 of the ’825 patent (id. ¶ 52), which we discussed in Section II.B.1. supra and reproduce again below. In Figure 2, Patent Owner annotates paths taken by network traffic within network topology 200 comprising root 220, branches 230a, 230b, and leaves 240a–d, 250 within network 200. PO Resp. 16–17; Ex. 2004 ¶ 52. In addition, Chandra’s network 102 is “a collection of individual networks, interconnected with each other and functioning as a single large network.”7 Ex. 1004 ¶ 21. Network 102 can include LANs, WANs, and/or MANs. Id. As a result, network devices 104 located in different networks of network 102 transmit to one another via edge network links 218 within this internetwork of networks 102. Id. ¶¶ 8, 9, 21–30, Figs. 1, 2; Pet. 22–26. Transmitting and receiving CEs 208, 214 are security-based devices at the edges of different networks in network 102 to control incoming network traffic sent between transmitting and receiving network devices 206, 212 located in different networks. Ex. 1004 ¶ 30. A plurality of CEs can be associated with a single PE to receive incoming network traffic from a transmitting CE. Ex. 1004 ¶ 28. Thus, network traffic is transmitted from network devices 104 connected to a plurality of CEs that connect to other CEs via edge network link 218 and to other network devices 104 connected to those CEs “along multiple interconnected paths” (see id. ¶¶ 28–30) that satisfies Patent Owner’s definition of CSF (PO Resp. 13). The sending and receiving CEs “constitute multiple cooperating network security appliances” contrary to Patent Owner’s arguments (PO Resp. 38), as do CEs 208, 214.” slip op. at 17

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

    “Buruganahalli’s topology of devices 50, 52, 54 coordinates security operations that they perform on network data 58 sent from network device 54 to network device 52 to network device 50 from one hop to the next hop. Ex. 1005 ¶¶ 30–32, 34–36, 38–40, 46–48, Fig. 3. We agree with Petitioner that it would have been obvious to update Chandra’s metadata tag for a multi-CE path to indicate actions taken, as Buruganahalli teaches, to reduce latency and resource waste. Pet. 53–54 (citing Ex. 1002 ¶¶ 122, 125 (citing Ex. 1004 ¶ 28)). Dr. Franz testifies it would have been obvious to arrange Chandra’s different network security appliance CEs in series so that traffic passed through multiple CEs that performed different security functions in a CSF before reaching a receiving PE, as Chandra and Buruganahalli teach or suggest. Ex. 1019 ¶ 60 (citing Ex. 1004 ¶¶ 28, 30; Ex. 1002 ¶¶ 122, 125). Patent Owner’s argument that the CEs are not in series does not address Petitioner’s contention that it would have been obvious to place them in series, as Buruganahalli discloses, to perform different security operations on network traffic. Pet. 54; Ex. 1019 ¶ 60; Cf. Sur-reply 20–21. Petitioner contends that Chandra’s system also transmits data packets with updated labels to devices in an extended virtual private network (VPN) shown in Figure 8. Pet. 54. Petitioner asserts it was well known to connect a private network of a remote company site to another network such as an enterprise network using a VPN tunnel, and it would have been obvious to attach the VPN in Figure 8 to a private network as an extension of Figure 2’s private network. Pet. 54–56. Petitioner contends that, in such instances, a receiving CE would transmit data packets with the updated label to a receiving device in an extended network using the transmitting and receiving end configurations shown in Figures 2 and 8 of Chandra. Id. at 54. We agree with Petitioner that a skilled artisan would have been motivated to connect Chandra’s Figure 2 private network to Chandra’s Figure 8 VPN network to extend enterprise network communications so the next device in the extended VPN network would be “a next network appliance participating in the CSF” as claimed. Pet. 54–56; Reply 26–27 (citing Ex. 1019 ¶ 61). We also agree with Dr. Franz who testifies: Contrary to the PO’s assertion that “Petitioner…provides no rationale for why a POSITA would modify Chandra by combining Figures 2 and 8, or explain why a POSITA would reasonably expect it to succeed (POR, 45),” I provided ample reasons why a POSITA would have found it obvious that the VPN in Chandra’s Figure 8 could be attached as an extension to the private network in Chandra’s Figure 2 as illustrated below. In fact, I provided an example of a widely circulated official publication by the U.S. National Security Agency containing a reference architecture that recommended cascading multiple VPN solutions for added security. (Franz. Decl. ¶126-130.) Ex. 1019 ¶ 62 (citing Ex. 1002 ¶¶ 126–130).” slip op. at 30

  Patent outcomesUS 10,084,825 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,084,825
• Netskope, Inc. v. Fortinet, Inc.All claims unpatentable
  PTAB · Aug 12, 2024 · IPR2023-00458 · APJ James P Calve · IPR · Final written decision

  Claims 1–3, 6, 8–17, and 21–27 are unpatentable under § 103 over the five asserted combinations of prior art.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “Final Written Decision under 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2020) as to the patentability of the claims on which we instituted trial. Petitioner bears the burden of proving unpatentability of the challenged claims. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). For reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 8–17, and 21–27 of the ’678 patent are unpatentable.” slip op. at 2

  • Skill levelOther

    “II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 16–17 (the positions in the PO Response would be the same under either parties’ proposal). The parties’ proposals are substantially the same. Our decision and analysis would be the same under either party’s proposal.” slip op. at 6

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

    “c. Analysis The ’678 patent describes storage containers as “directories, directory structures, web directories, folders, . . . files and namespaces of the same.” Id. at 6:44–47; id. at 10:12–15. However, it discloses that data is “stored in the namespaces, directories, folders, files or other storage containers of one or more cloud platforms,” which seems to equate namespaces with storage containers. Id. at 9:23–25. In claim 6, “the step of configuring the namespaces comprises storing content of the file as filenames.” Id. at 20:20–22. One definition of “namespace” is a “grouping of one or more names that represent individual objects within the group in a shared computing environment, such as a network.” Microsoft Computer Dictionary, Fifth Edition 130 (Microsoft Press 2002) (Ex. 3001). “The names within a namespace are unique, are created according to the same rules, and can be resolved into a particular identifying item of information, such as an IP address or a network device.” Ex. 3001.” slip op. at 7

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

    “set of names available for naming things.’” Reply 1 (citing Ex. 1002 ¶ 101; Ex. 1014 (Dictionary of Computer and Internet Terms)); Tr. 5:18–20, 7:21– 8:1. This definition is consistent with the extrinsic evidence cited above. Patent Owner largely agrees with this proposed definition. Dr. Black testifies that “to the extent a namespace is applied to object identifiers, it will define the set of allowable identifiers within a particular context.” Ex. 2003 ¶ 69 (cited in PO Resp. 19). Dr. Black agrees with Dr. Lee’s testimony “that a directory named ‘documents’ is a namespace for the files within that directory––within that ‘documents’ namespace, files can be identified by simply referring to the file name, such as ‘foo.’” Id. ¶ 68. Patent Owner however, asserts that “a name itself (such as an identifier that identifies an object) is not a namespace.” PO Resp. 19. Patent Owner asserts that the ’678 patent provides “an example of creating a namespace for file chunks as part of the encryption process” as “each chunk can be encrypted based on public and private/secret keys defined by the encryption module 210” “where keys are managed based on user-assigned policies.” PO Resp. 20. Patent Owner asserts that “[t]hese policies therefore create a namespace that defines the naming convention for the file chunks (e.g. encryption based on a particular key).” Id. Patent Owner asserts that “storing the file chunks in a folder creates a namespace scope for the file chunks” and namespaces are configured by storing file content as file names. Id. (citing Ex. 2003 ¶ 71); see Tr. 8:5–11, 11:2–12:11. d. Conclusion In view of the foregoing, we adopt Petitioner’s proposed interpretation of “namespace” as “a set of names available for naming things.” Consistent with various exemplary embodiments described in the ’678 patent, the set of names available for naming things may be based on a policy that defines the naming convention for files or file chunks, and a namespace may be created by storing files or file chunks in a folder to create a namespace scope for the files or file chunks.” slip op. at 8

  Patent outcomesUS 9,280,678 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,280,678
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.Some claims unpatentable
  PTAB · Aug 7, 2024 · IPR2023-00538 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5–10, 13–18, 20–22, 24, 31, and 32 are unpatentable; claims 2–4, 23, and 25–30 were not shown unpatentable. The revised motion to amend was granted in part and denied in part.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “d. Summary For the above reasons, we determine that Patent Owner has not shown” slip op. at 100

  • ExcludeMotion to exclude, deniedOther

    “IV. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner seeks to exclude Exhibit 1034 and page 10 of the Reply” slip op. at 86

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “A. “housing” Patent Owner proposes that we construe the term “housing” to mean” slip op. at 15

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “suggested to one skilled in the art, objective evidence of non-obviousness (“secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (citation omitted). For us to give substantial weight to objective evidence of nonobviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining non-” slip op. at 21

  Patent outcomesUS 9,365,223 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,365,223
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 21–30, 36, and 37 are unpatentable as obvious; the Revised Motion to Amend is denied, and the Motion to Exclude is dismissed as moot.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “G. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 10

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

    “B. Other Claim Terms The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine the teachings of Armitage and Barone in the manner suggested. ix. Summary as to Claim 1 We find that Petitioner has shown sufficiently that the combination accounts for the limitations of claim 1, and that a person of ordinary skill would have been motivated to combine Armitage and Barone with a reasonable expectation of success. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Armitage and Barone.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “include selection of data along certain axes or combinations of axes measured by the accelerometer and ignoring unselected data, well-supported and entitled to substantial weight. See Ex. 1025 ¶¶ 4–6. We find Dr. Shamos’s testimony to the contrary, Ex. 2006 ¶¶ 40–42, inconsistent with the disclosure of the challenged patent, and entitled to little weight. Patent Owner argues that Armitage does not monitor all of the axes, like the ’915 patent. See Sur-reply 1–3. However, the ’915 patent, just like in Armitage, isolates the data from a single axis for further analysis. See Ex. 1001, 13:17–24. Thus, we do not find Patent Owner’s distinction to be persuasive. Accordingly, we find that Petitioner has shown that Armitage accounts for this limitation.” slip op. at 24

  Patent outcomesUS 10,137,915 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,137,915
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Jul 18, 2024 · IPR2023-00539 · APJ James P Calve · IPR · Final written decision

  The Board held original claims 1–18 and 20–22 unpatentable over the asserted obviousness grounds, denied the revised motion to amend, and held substitute claims 23–43 ineligible and unpatentable.

  RulingsFinal written decision

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

    “f. Conclusion We determine that Petitioner has established by a preponderance of” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “2. Motivation to combine a. Petitioner’s contentions Petitioner contends that a skilled artisan would have combined the teachings of LeFebvre and Barone to monitor the condition of railcar wheels and bearings using sensors connected over a wireless mesh network and to analyze collected data to determine if a wheel bearing failure is imminent and issue an alert to the locomotive or central station. Pet. 42–43 (citing Ex. 1007, code (57), Abstr., ¶¶ 45, 86, 201–220; Ex. 1003 ¶¶ 157–162). b. Patent Owner’s arguments Patent Owner does not contest these assertions regarding a motivation to combine LeFebvre and Barone. See generally PO Resp.; Sur-reply. c. Conclusion We determine a skilled artisan would have combined the teachings of” slip op. at 51

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “(4) Conclusion We determine that Patent Owner has demonstrated that the inventors” slip op. at 59

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “(4) Conclusion We determine that the above-described lack of clarity in the meaning” slip op. at 72

  Patent outcomesUS 9,981,673 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Enfish · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 9,981,673

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.