• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00562 · APJ Bryan F Moore · IPR · Final written decision

  Claim 4 was held unpatentable as obvious over Averbuj and Tsern; the trial was terminated as to claim 1 based on collateral estoppel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Skill Analysis Petitioner asserts “[a] a person of ordinary skill in the art at the time of the ‘501 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST” Pet. 6 (citing, inter alia, Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “a. Claim 1 Claim 1 is anticipated by Averbuj under the doctrine of collateral estoppel. See supra Section II. A. b. Claim 4 Claim 4 recites “[t]he memory system of claim 1, wherein the memory system comprises at least two physically separate integrated circuit packages, wherein each of the at least two physically separate integrated circuit packages comprises at least one data handler of the plurality of data handlers.” Petitioner asserts that Averbuj discloses that BIST units are “commonly incorporated into memory chips and other integrated circuits.” Ex. 1005 at ¶ [0003]. Because the memory interfaces are part of a BIST unit, Averbuj also discloses the memory interface (10, 41) is commonly incorporated into (memory or other) chips, or “integrated circuits.” Ex. 1012 at 98, 277; Ex. 1003 at ¶ 126. Averbuj further discloses that the device block (6) and the components contained therein, such as the sequencer (8) and the memory modules (12), are “distributed” and “located throughout an electronic device,” i.e., physically separated. See e.g., Ex. 1005 at ¶¶ [0013], [0015]; Ex. 1003 at ¶ 127. Since memory interfaces (10, 41) are also components of each device block (6), at a minimum, the different sets of memory interfaces (10, 41) belonging to different device blocks (6) must also be physically separated. Ex. 1003 at ¶ 127. Averbuj also discloses that the various integrated circuits or chips of an electronic device are “mounted on a circuit board,” indicating that the integrated circuits and chips comprising the electronic device are packaged integrated circuits or chips. Ex. 1005 at ¶ [0005]; Ex. 1016 at 1:15-27; Ex. 1003 at ¶ 128. Therefore, Averbuj discloses that the memory interfaces (each containing a “data handler”) of different device blocks (which comprise a “memory system”) must be distributed across “at least two physically separate integrated circuit packages.” Ex. 1003 at ¶ 129. Pet. 30–31. In other words, Petitioner asserts that because the sequencer can be” slip op. at 21

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

    “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (internal quotations omitted) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). For example, in ActiveVideo Networks, Inc. v. Verizon, our reviewing court 7 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS and to explain the background in the context of Patent Owners’ Motion to Strike. held that the following expert testimony on the motivation to combine was deficient as a matter of law: [Y]ou wanted to build something better. You wanted a system that was more efficient, cheaper, or you wanted a system that had more features, makes it more attractive to your customers, because by combining these two things you could do something new that hadn’t been able to do before. Active Video Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). The court noted that because the expert “failed to explain how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims,” the expert’s testimony was conclusory and bore no relation to any specific combination of prior art elements. Id. at 1327. Although the declarant’s testimony here goes further than in Active Video, it fills in gaps about how the combination would be made with only conclusory testimony that appears to be tainted with hindsight. As to other of Petitioner’s arguments supported by its declarant, we find those to employ hindsight to piece together the device as claimed. The expert provides a host of rationales for separating the components of Averbuj into separate ICs including structures of Tsern (Ex. 1003 ¶ 143) and other secondary references. We acknowledge that Tsern contains structures that suggest the claimed configuration of the data handlers, but in this ground Petitioner does not assert Tsern as a reference, rather simply as evidence of the knowledge of one of skill in the art. Pet. 34–38. Relying on knowledge in the art does not obviate the need to prove a reference is prior art as of the critical date and show a motivation to combine existing slip op. at 25

  Patent outcomesUS 8,359,501 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision

  Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.

  RulingsFinal written decision

  • ExcludeMixed

    “Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21

  • BurdenDecided for patent owner

    “involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22

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

    “preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29

  Patent outcomesUS 8,542,880 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,542,880
• Arista Networks, Inc. v. Cisco Systems, Inc.Some claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00303 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18–22, 25, and 28–31 are unpatentable as obvious over Huey and ATM UNI; claim 2 was not shown unpatentable.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “PO Mot. 13–14. A motion to exclude is the wrong vehicle to challenge public availability, which is a substantive issue that goes to the sufficiency of the evidence, not to admissibility at issue here. FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, slip. op., Paper 113 at 4 (PTAB September 3, 2015) (“A motion to exclude is not a vehicle for addressing the weight to be given evidence.”); see also 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact.”). For the reasons above, we do not exclude Exhibit 1028.” slip op. at 9

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

    “35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986). To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (finding both hair brush art and toothbrush art to be analogous to a claim to a hair brush) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (citations omitted). The scope of the field of endeavor is a factual determination based on the scope of the application's written description and claims. Bigio, 381 F.3d at 1326. slip op. at 27

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

    “There are two problems with Petitioner’s assertion. First, Petitioner has not shown a reason to combine Kogge with Huey and the ATM UNI Specification. Second, to the extent this reference is used to show the scope and content of the art at the time of the invention, Kogge makes it clear that parallelism and pipelining are different concepts that are “generally discernably different in their general approach.” Ex. 1033, 1. Petitioner has not explained how Kogge shows that putting packets through the pipeline without waiting for the previous packet to finish would be considered operating in parallel given that this reference distinguishes parallel operation from pipeline operation. Petitioner argued at the oral hearing that Patent Owner was advocating “a particular flavor of parallelism, as opposed to what’s understood by normal parallel pipelining.” Tr. 41:6–14. However, neither Petitioner nor its declarant has explained what “normal parallel pipelining” is or what the basis is for us to define “normal parallel pipelining.” Thus, we are not persuaded by Petitioner’s contention that one of ordinary skill in the art would modify Huey to meet the limitation of performing at least two of said steps “in parallel using a pipeline.”” slip op. at 33

  Patent outcomesUS 6,377,577 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,377,577
• Funai Electric Co., Ltd. / Samsung Display Co., Ltd. et al. v. Gold Charm Ltd.All claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01468 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Yamada because the Board found the claimed connecting structure and limitations obvious in light of Yamada.

  RulingsFinal written decision

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

    “The record supports Petitioner’s position and the claim construction determined in the Institution Decision. The ’053 patent specification broadly describes a protrusion as having any configuration: “The configuration of the protrusion 17a is any provided that it can be connected to the GND line in the connecting substrate and the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45. According to a general dictionary cited in the Institution Decision, the plain meaning of “protrusion” is “something that protrudes,” and “protrude” means “[t]o push or thrust outward” or “[t]o jut out; project.” Ex. 3001; Inst. Dec. 6 (citing Ex. 3001). The ’053 patent specification shows protrusions that correspond to this evidence of plain meaning. For example, Figures 6A–6C show protrusions 17a projecting from an edge of wiring pattern portion 17b of a bonding assist portion. See, e.g., Fig. 6C supra. Our claim construction and the plain meaning (as evidenced by the cited dictionary definition (Ex. 3001)) also comport with the statement in the specification that the protrusion configuration “is any” provided “it can be connected to the GND line” and “the width and length of the protrusion 17a can be changed on demand.” Ex. 1001, 11:42–45 (emphases added).” slip op. at 7

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “C. Real Parties in Interest Patent Owner argued in its Preliminary Response that Petitioner fails to name all real parties in interest (RPIs) in its Petition as required by 35 U.S.C. § 312(a)(2). Patent Owner does not present this argument in its Patent Owner Response and, therefore, has waived it. See Paper 15, 3 (“[P]atent owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.). Assuming for the sake of argument that Patent Owner did not waive the RPI issue, we rely on, and incorporate, our findings and determination in the Institution Decision. See Inst. Dec. 20–28.” slip op. at 49

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

    “that Yamada teaches connecting the bonding assist region to ground in order to eliminate electrical noise through shielding. Pet. 17 (citing Ex. 1002 ¶ 79; Ex. 1009 ¶¶ 5, 7, 22, 30). Considering the teaching in Yamada of a necessary connection to ground for shielding, Petitioner cites Mr. Flasck, who declares that “one of ordinary skill in the art at the time of the ’053 [invention] would have known that some electrical protrusion would be inherently necessary to connect the bonding assist portions to a fixed potential.” Ex. 1002 ¶ 79 (emphasis added); Pet. 17 (citing Ex. 1002 ¶ 79). Petitioner also contends that “locating a protrusion” centrally or “at a different location is nothing more than a design choice,” or skilled artisans 8 Compare Wagner, 63 F.2d at 986–87 (relying on drawings), Seid, 161 F.2d at 231 (relying on accidental drawings), Mraz, 455 F.2d at 1072 (relying on drawings), and Vas-Cath, 935 F.2d at 1566 (relying solely on design patent drawings for written description of relative proportions), with Hockerson- Halberstadt, Inc. v. Avia Group Int’l., Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (stating “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). As discussed above, notwithstanding the reasoning in Hockerson-Halberstadt, Yamada’s specification is not “completely silent” on the issue, as it disclose ranges for wiring widths, implying all widths need not be equal. Also, notwithstanding the dicta regarding drawings, the holding in Hockerson- Halberstadt turned on patent owner’s disavowal of claim scope based on prosecution history that overcame defendant’s argument that relied on alleged drawing dimensions that the patent owner had distinguished during prosecution. See id. at 956–57. “would be guided by design options.” Pet. 36–37 (citing 1002 ¶¶ 121–122). In other words, the thrust of Petitioner’s showing as summarized in the Institution Decision is that it would have been obvious to employ a protrusion somewhere in Yamada’s bonding assist region in order to ensure a ground connection and to prevent noise––a connection that Yamada discloses. See Ex. 1002 ¶¶ 70, 72–73, 79; Ex. 1009 ¶¶ 5, 7, 22, 30; Pet. 11, 35–37; Inst. Dec. 10 (connection to ground), 11 n.4, 14 (obviousness), 18 (obviousness); see also PO Resp. 32 (joining the issue and arguing the opposite: “Yamada does not . . . teach or suggest . . . a protrusion connected to ground” as claimed in the ’053 patent). Petitioner’s contentions are persuasive to show the obviousness of connecting Yamada’s bonding assist region using a simple protrusion or contact extension, for the purpose of ensuring the electrical connection disclosed by Yamada. The claimed “connecting structure . . . comprising: . . . a bonding assist region . . . including” a “protrusion” (an electrical contact), as claims 1 and 4 recite, constitutes “the predictable use of prior art elements according to their established functions.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“We also agree that the particular placement of the contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art.”).” slip op. at 32

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Yamada’s teachings or indicate a clear intent for the layers not to have “substantially the same height,” as called for in claim 2. See Ex. 1009, Fig. 9.11 Petitioner persuasively explains that using the same material and process to create both wiring portions, wherein a PCB nominally begins with a wiring layer as Patent Owner admits, would have been obvious as a matter of efficiency in terms of bonding and would have simplified the process by using the same existing materials. See Pet. 19–20; 1002 ¶¶ 85–86, 88; Prelim. Resp. 37 (“such wirings of a printed circuit board would presumably be comprised of copper, as would be known to those of ordinary skill in the art”); Inst. Dec. 17 (discussing showing of efficiency). Yamada uses predetermined bonding assist patterns 5 to improve bonding reliability between existing wiring layers and overcome defective bonding. See Ex. 1009, Abstract, ¶¶ 6, 8–11, 24, 27, 29, 31. Yamada at least suggests forming the two wiring portions using the same material and processes at the same time: “As illustrated in Fig. 1, the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41 (emphasis added). Notwithstanding Patent Owner’s arguments about alleged “reasons . . . to have different heights” (PO Resp. 46 (citing Ex. 2021 ¶¶ 68, 69)), Patent Owner does not address the “efficiency” reasons advanced by Petitioner for suggesting substantially the same height at the side-by-side metal regions of Yamada. See PO Resp. 45–46. 11 Patent Owner argues that Petitioner inconsistently relies on what Figure 5 portrays and ignores what Figure 9 portrays. See PO Resp. 4–5 n.1, 38. That argument overlooks that drawings must be interpreted in view of what the full disclosure portrays to artisans of ordinary skill. Also, Yamada does not disclose adding other material or different material to wiring portions 4a-h and 5. Responding to Patent Owner’s position, Petitioner relies on Mr. Flasck, who testifies that “to those of ordinary skill in the art,” Yamada teaches making the bonding assist region and terminal region of the same material and thickness. Pet. Reply 13 (citing Ex. 1009 ¶ 41; Ex. 1015 ¶ 45). As noted above, at the cited paragraph of Yamada, Yamada discloses that “the wiring terminals 4 and the conductive layer 5 are formed on the PWB 1 together.” Ex. 1009 ¶ 41. This at least suggests forming them of the same material––i.e., using the material of the printed circuit board. Mr. Flasck testifies that “to the average practitioner at the time, in this context, ‘together’ would have had the natural meaning of ‘formed of the same material at the same time.’” Ex. 1015 ¶ 46.” slip op. at 44

  Patent outcomesUS 6,909,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 6,909,053
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · Jun 30, 2016 · IPR2015-00377 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–16, 18–24, and 26 are unpatentable as obvious; the challenges to claims 2, 8, 11, 17, 25, and 27 were not proven.

  RulingsFinal written decision

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

    “claims). Pet. 7. In our Decision to Institute, we determined the broadest reasonable construction of anomalous is: “deviation/deviating from a model of typical computer system usage.” Dec. 6. We specifically recognized that the Specification contemplates that “attack data” may be used to build the model used as a baseline for comparison to identify anomalous behavior. Id. Neither party has indicated that our determination in regard to that claim construction was improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determination.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “one of these distinct models, the ‘Oracle model,’ is combined with other models.” Pet. Reply 6 (citing Ex. 1008, 11:53–64 (showing that a selected ‘Oracle model’ is used in combination with a k-means algorithm and a Markov transition model); Ex. 1015 (Goodrich Suppl. Decl.) ¶ 19). Petitioner has not explained, however, why models created on different computers would be relevant to Khazan’s static model where the specific execution of two different computers would not affect the model.2 See In re Omeprazole Patent Litig., 536 F.3d 1361, 1380 (Fed. Cir. 2008) (reasoning that even though a certain modification could have been possible, it would not have been obvious because a person of ordinary skill in the art “would not have seen any need” to make the modification). Although we acknowledge Petitioner’s argument that Agrawal teaches using a combined model from different processors and the testimony of Petitioner’s Declarant, Dr. Goodrich to that effect (Pet. 23 (citing Ex. 1003 ¶ 84)), we are not persuaded that this would be sufficient to motivate the 2 Petitioner’s Declarant, in his supplemental declaration, states “[u]sing multiple computers spreads the computational overhead involved in creating the models across the computers, and allows for more models to be created in a shorter amount of time.” Ex. 1015 ¶ 20. We do not rely on this statement because this theory was not presented in the Petition and although the paragraph containing this language is cited to in Petitioner’s Reply at page 6, it is not explained or specifically relied upon. 24 combination given the differences discussed above. In other words, we agree with Patent Owner that Petitioner has not shown sufficiently that there was a motivation to apply the models produced on different computers as taught by Agrawal to the system of Khazan. Therefore, Petitioner, has not shown by a preponderance of the evidence that claims 2, 11, and 27 were obvious over the combination of Khazan and Agrawal.” slip op. at 24

  • Obviousness (§103) › KSR rationalesNot shown unpatentableUnpatentableMixed

    “Petitioner also asserts through its Declarant that “one of ordinary skill in the art would recognize that random selection of models is one of a finite number of identified, predictable selection techniques and it would be obvious to try random selection among models because it has a reasonable expectation of success.” Pet. 29–30 (citing Ex. 1003 ¶ 86). Petitioner does not explain how random selection is one of a finite number of predictable selection techniques; for example, Petitioner does not show how many other techniques could be considered. See Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008) (“KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness . . . . [T]his clearly is not the easily traversed, small and finite number of alternatives that KSR suggested might support an inference of obviousness.”). Dr. Goodrich has not identified sufficient support for the predictability of the art. For example, Dr. Goodrich has not explained sufficiently why, or identified evidence that shows the invention described in the ’322 Patent falls into a very predictable field, one of ordinary skill in the art would have possessed the requisite skills to make the proposed combinations, or one of ordinary skill in the art reasonably would have anticipated the combination to function in an ordinary and expected way. See Rothman v. Target Corp., 556 F.3d 1310, 1319–20 (Fed. Cir. 2009). 21 Finally, Petitioner cites Sobel (Ex. 1011)1 as support for it being “obvious to randomly select a subset of a group of computing choices.” Pet. 30. Petitioner characterizes Sobel’s teachings too broadly. Ex. 2030 ¶ 117. Sobel is directed to “providing software updates to a random sample of computers,” not to randomly selecting models. Pet. 30. Thus, we are not persuaded that Sobel is relevant to the inquiry here. For the reasons stated above, Petitioner has not shown by a preponderance of the evidence that claims 8, 17, and 25 were obvious over the combination of Khazan and Agrawal.” slip op. at 21

  • Skill levelSkill level board ownDecided for petitioner

    “We have considered Patent Owner’s argument that the Petition fails to propose properly a level of ordinary skill in the Petition itself and that the level of skill suggested by Petitioner’s Declarant is higher than the level used in the related district court case. PO Resp. 6–8. Nevertheless, Patent Owner does not argue that the combinations of the teachings of the references are beyond the level of skill of a person of ordinary skill in the relevant art. The level of skill in the art might be gleaned from the prior art itself. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985) (“A specific finding on the level of skill in the art is not . . . required where the prior art itself reflects an appropriate level and a need for testimony is not shown.”). Here, we find that the prior art adequately reflects an appropriate level of skill and that Patent Owner does not demonstrate a need for testimony or other evidence to establish the level of skill of a person of ordinary skill in the relevant art. Also, we find that, even though Dr. Goodrich suggests a level of skill higher than the level used in the related district court case, Patent Owner does not show sufficiently that any such difference in level of skill is material to the obviousness analysis in this case.” slip op. at 28

  Patent outcomesUS 8,601,322 mixed
  Claim construction§ 103 obviousnesscites Markman · KSR · Graham
  Patents in suitUS 8,601,322
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00372 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1 and 3–8 are unpatentable as obvious over Bace and Russinovich; claims 9 and 10 were not shown unpatentable because the evidence did not establish the claimed likelihood of observing a feature.

  RulingsFinal written decision

  • BurdenMixed

    “We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 3–8 would have been obvious over Bace and Russinovich. We determine that Petitioner has not shown by a preponderance of the evidence that claims 9 and 10 would have been obvious over Bace and Russinovich.” slip op. at 7

  • Skill levelSkill level board ownDecided for patent owner

    “2. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Michael T. Goodrich, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 18–19. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 13–14; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 9

  • Expert testimonyOther

    “Patent Owner’s Motion for Observations E. Patent Owner filed a Motion for Observations on the cross examination of Dr. Michael T. Goodrich (Paper 47), to which Petitioner filed a Response (Paper 50). We have considered Patent Owner’s observations and Petitioner’s responses, and we have given Dr. Goodrich’s testimony the appropriate weight in making our determination in this case.” slip op. at 30

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

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 9. Pet. 39–41; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 39–41; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 9 would have been obvious over Bace and Russinovich. Claim 10 6. Claim 10 depends from claim 9, and recites “wherein determining a likelihood of observing a feature comprises determining a conditional probability of observing a first feature in the records of processes that access the operating system registry given an occurrence of a second feature in the records.” Ex. 1001, col. 23, ll. 8–12. Because claim 10 depends from claim 9, and Petitioner has not shown that claim 9 would have been obvious over Bace and Russinovich, we determine that Petitioner also has not shown by a preponderance of the evidence that claim 10 would have been obvious over Bace and Russinovich. See supra Section II.B.5.” slip op. at 25

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00378 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 14 and 16–24 are unpatentable as obvious over Bace and Russinovich; claims 25 and 26 were not shown unpatentable because the evidence did not establish the claimed feature-likelihood limitations.

  RulingsFinal written decision

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

    “contends that this construction is necessary to clarify that the challenged claims require monitoring registry accesses because Petitioner’s declarant, Dr. Michael T. Goodrich, testified during his deposition that the records “may be records that don’t have direct impact on the registry.” Id. at 7–8. Even if Patent Owner’s characterization of Dr. Goodrich’s deposition testimony is accurate, Petitioner does not argue in the Petition or the Reply that the challenged claims do not require monitoring registry accesses. See Pet. 13–15, 21–32; Pet. Reply 1, 3–8. As such, there does not appear to be a dispute that requires claim construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Nonetheless, in order to avoid any ambiguity, we provide an express construction of the phrase “records regarding processes that access the operating system registry.” We determine that the evidence supports Patent Owner’s proposed construction. The written description of the ’084 patent consistently indicates that records of processes are obtained by monitoring accesses to the operating system registry. Ex. 1001, col. 5, ll. 6–18, col. 8, ll. 9–10, col. 8, ll. 22–24, col. 13, ll. 28–31, col. 13, ll. 46–52. In addition, Petitioner acknowledges that the challenged claims require monitoring accesses to the operating system registry. Tr. 12:15–13:3. Patent Owner’s proposed construction, however, omits the claim terms “processes” and “operating system,” which are part of the phrase being construed. Ex. 1001, col. 23, ll. 32–34. Therefore, we modify Patent Owner’s proposed construction to include those terms. Specifically, we construe the phrase “records regarding processes that access the operating system registry” to mean “records regarding processes obtained by monitoring accesses to the operating system registry.”1” slip op. at 6

  • Skill levelOther

    “of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 9–10. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 7–8; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case. Patent Owner argues that, even if Petitioner correctly defines the level” slip op. at 9

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

    “90–93, 128, 139 (pp. 68–69); Ex. 1029 ¶¶ 9–10. Therefore, the teachings of Bace, together with the background knowledge and perspective of a person of ordinary skill in the art, would have made it obvious to use records obtained by monitoring registry accesses as an information source for an anomaly detection system. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362– 63 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).” slip op. at 13

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

    “Thus, Petitioner identifies evidence indicating that Bace teaches determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 25. Pet. 41–42; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 41–42; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 25 would have been obvious over Bace and Russinovich.” slip op. at 28

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00374 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable as anticipated by Bace and Denning; claims 7 and 8 were not shown unpatentable because neither reference disclosed determining the likelihood of observing a feature.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “of ordinary skill in the art at the time of the ’306 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’306 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 24. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 8. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex. 1029 ¶¶ 7–8. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 5

  • BurdenMixed

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace discloses determining the likelihood of observing a feature, as recited in claim 7. Pet. 30–32; Pet. Reply 14–15; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 30–32; Pet. Reply 14–15; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’306 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Bace specifies that certain information sources are used for a computer system with a Windows operating system. Namely, Bace discloses that, for a Windows computer system, “security log events are the primary focus of intrusion detection systems,” and “especially those having to do with the creation, deletion, and alteration of system files and other 3 Patent Owner suggests that this portion of Bace only relates to the system call records gathered by UNIX system audit trails. Paper 48 ¶¶ 3–5. Section 3.2.4 of Bace, however, describes the advantages of operating system audit trails generally, not just UNIX system audit trails. Ex. 1007, 70. objects.” Id. at 74–75 (emphases added). Bace then explains that the reference data obtained from the Windows computer system is used to generate the anomaly detection models discussed later in Bace. Ex. 1007, 109 (“Anomaly detectors are populated by running them against the collected reference event data.”); id. at 74–75, 121–122; Ex. 1003 ¶ 112. Thus, for a Windows computer system, Bace expressly links the reference data obtained by monitoring the creation, deletion, and alteration of system files with the disclosed anomaly detection models. Ex. 1029 ¶¶ 15–19; cf. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (explaining that the prior art did not link two distinct teachings). Bace further discloses that Denning’s anomaly detection model, which includes the mean and standard deviation model, is the “seminal” anomaly detection model. Ex. 1007, 108, 121–122. As a result, Bace provides a specific reason for selecting Denning’s anomaly detection model from among the other models disclosed in Bace. Ex. 1003 ¶ 111; Ex. 1029 ¶ 19. c. Summary For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by Bace.” slip op. at 11

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Here, Patent Owner argues that Petitioner’s Reply exceeds the scope of a proper reply because it presents a new theory of unpatentability for claim 7 based on the TIM system in Bace that is not included in the Petition. PO Mot. Str. 2–3. Petitioner, on the other hand, argues that its Reply is proper because the Petition relies on the TIM system in Bace with respect to claim 8, and, thus slip op. at 27

  Patent outcomesUS 7,913,306 mixed
  § 102 anticipation
  Patents in suitUS 7,913,306
• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Apr 27, 2016 · IPR2014-00971 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1–3 and 5–20 are unpatentable: Averbuj anticipates some claims, and Huang or JEDEC combinations render others obvious; claim 4 is not unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21, with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’501 patent and the types of problems and solutions described in the ’501 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21, with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’501 patent and the types of problems and solutions described in the ’501 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “Id. at 8:22–35. In our Final Decision in IPR2014-00970, we found that the above description of each data handler as “operable independently” and having the “further” feature of being “configured to generate data” (see id. at 5:16–23) supported Petitioner’s contention that the data generation function of the data handlers is an additional feature that is separate from the feature of independent operability. We found that based on the description quoted in column 8, lines 22–35, above, coupled with the discussion of the prior art problem of lack of flexibility in memory module self-test logic to accommodate changes to data width (see id. at 4:41–60, 8:24–29), one of ordinary skill in the art would understand the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. In the present case, we find similarly that the above-quoted language from the ’501 patent specification is consistent with the plain meaning of the language in claim 1, i.e., that each of the plurality of data handlers is configured to be operated independently, but only some of the data handlers (i.e., “one or more”) are further configured to generate data used for testing. We agree with Petitioner, therefore, that when interpreted in the context of the ’501 patent in its entirety, the claim term “operated independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 3. We find no basis in the ’501 patent specification for applying a different construction to the claim 16 language “operating . . . independently.” Accordingly, we interpret “operated independently”/“operating . . . independently” in accordance with its plain and ordinary meaning: “the operation of a data handler is not influenced or controlled by another data handler” (Reply 4).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control circuit) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 35. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 12–13), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the claim 1 limitation of “a control circuit configured to generate address and control signals” for testing memory chips, and that Averbuj describes “operating a control circuit [(i.e., a sequencer)] to generate address and control signals” used in testing memory chips as recited in claim 16 of the ’501 patent.” slip op. at 40

  Patent outcomesUS 8,359,501 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• Smart Modular Technologies Inc. v. Netlist, Inc.No claims unpatentable
  PTAB · Mar 9, 2016 · IPR2014-01374 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 2, 4–6, 9–11, 14–17, and 20 were not shown unpatentable under § 102(b) over Averbuj because its BIST controller did not generate the claimed address signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “Sechen believes a person of ordinary skill in the art would have additional experience, education, or a combination of the two, beyond that proposed by Dr. Bagherzadeh. Both experts have been employed as professors since the mid 1980s. Dr. Bagherzadeh also has some experience working with engineers in the industry by virtue of his employment with AT&T Bell Labs from 1980–1984 (Ex. 1009 ¶ 6; id. Appx. A). Both experts were awarded bachelors and masters degrees in electrical engineering. Dr. Bagherzadeh was awarded a doctorate in computer engineering, while Dr. Sechen was awarded a doctorate in electrical engineering. Based on a comparison of Dr. Bagherzadeh’s and Dr. Sechen’s declarations (Exs. 1009, 2019), we find Dr. Bagherzadeh has a broader range of educational and work experience, and, therefore, accord greater weight to his opinion as to the level of ordinary skill in the art. Dr. Bagherzadeh’s opinion is consistent with our finding as to the level of ordinary skill in the art in our Final Written Decision in IPR-971. We, therefore, adopt our finding in IPR-971 as to the level of ordinary skill in the art: [A] person of ordinary skill in the art at the time of the ’501 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “We are not persuaded by Dr. Bagherzadeh’s testimony because it is devoid of specific facts and analysis as to what led him to conclude that a person of ordinary skill in the art would interpret the claim term “generate” in the manner Petitioner proposes. See id. Dr. Bagherzadeh does not explain how the IEEE definition supports an interpretation of generate as “cause or initiate transmission,” terms that do not appear in the IEEE definition. See id. Nor does Dr. Bagherzadeh identify other extrinsic evidence which he believes to be consistent with an interpretation of “generate” as meaning “cause or initiate transmission.” See id. Likewise, Dr. Bagherzadeh has not explained why he believes the ’501 patent “describe[s] generating as initiating or transmitting” (Ex. 1009 ¶ 28), as these terms do not appear in the cited portions of the ’501 patent. See Ex. 1008, 6:8–10, 11:4–11:6, 6:19–22.1 Accordingly, Dr. Bagherzadeh’s testimony does not persuade us to accept Petitioner’s interpretation of “generate” as meaning “cause.”” slip op. at 15

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

    “arranged” or “prepared.” Reply 9–10. Responsive to this Board panel’s questioning during the oral hearing, however, Petitioner agreed that “designed to, adapted to, or arranged to” was an acceptable definition for the claim term “configured to.” See Tr. 22:7–17. Patent Owner contends the phrase “configured to generate” should be construed as “programmed to generate.” PO Resp. 9. Patent Owner does not propose a separate construction for the term “configured.” See generally id. at 9–17. In support of its proposed construction, Patent Owner relies on language in the ’501 patent and the testimony of its expert, Dr. Sechen. See id. Dr. Sechen testifies as to the meaning of “configured to generate,” but does not provide a separate discussion of the meaning of “configured to” outside the context of “configured to generate.” See Ex. 2019 ¶¶ 42–57. As explained in our Final Decision in IPR-971, the term “configured to” is used in the ’501 patent in conjunction with numerous terms, such as “provide” and “selectively input,” and there is a presumption that the term “configured to” should carry the same meaning in each instance. See IPR- 971 FWD, 18–19. The evidence relied on by Patent Owner in support of its proposed construction of the term “configured to” in the present inter partes review does not differ materially from the evidence relied upon by Patent Owner in IPR-971. Compare PO Resp. 9–17 with IPR-971, Paper 19, 14– 19. Accordingly, we determine the broadest reasonable construction of “configured to” is “designed to, adapted to, or arranged to” for the reasons stated above and in our Final Written Decision in IPR-971. We adopt and incorporate by reference our analysis and construction of the term “configured to” in our Final Written Decision in IPR-971 (IPR-971 FWD, 18–22). slip op. at 18

  Patent outcomesUS 8,359,501 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,359,501

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.