- Crowdstrike, Inc. v. Gosecure, Inc.Institution deniedPTAB · May 9, 2025 · IPR2025-00069 · APJ Garth D Baer · IPR · Institution
The Board denied institution because the petition did not show that the prior art teaches creating a fingerprint at the virtual machine monitor, as claims 1–18 and 21–23 require.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification describes only fingerprint creation outside the virtual machine monitor because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. See Sur-reply 1– 2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not contest that Capalik’s fingerprint generation occurs outside the components that Petitioner identifies as the claimed virtual machine monitor. Reply 1–3; see Pet. 18–23 (mapping Capalik’s hypervisor kernel 516 to the claimed virtual machine monitor); id. at 30–31 (mapping Capalik’s processing module 508 and signature generation engine 530 to the claimed fingerprint creation); see also Prelim. Resp. 21–23 (explaining Petitioner’s mapping). Instead, Petitioner asserts that the at-issue claim language—“at the virtual machine monitor”—does not require “that each of the subsequently recited steps must be performed by or in the [virtual machine monitor],” but instead only requires “that the fingerprint is generated by the same decoy system that contains the [virtual machine monitor].” Reply 2. Petitioner argues that the intrinsic record supports its position because “[n]owhere in the ’697 Patent is there any teaching or suggestion that a [virtual machine monitor] creates a fingerprint/signature indicative of attack activity,” and instead, “[t]he ’697 Patent teaches that its signature generation engine is separate from the [virtual machine monitor].” Reply 2 (citing Ex. 1001, 8:12–19). In addition, Petitioner asserts that requiring fingerprint creation at the virtual machine monitor “directly” slip op. at 8
- Adverse judgmentOther
“D. Statutory Disclaimer and Remaining Challenged Claims The Petition challenges claims 1–23. Pet. 10. However, because Patent Owner disclaimed claims 19 and 20 (Ex. 2010), the remaining challenged claims are 1–18 and 21–23. See 37 C.F.R. § 42.107(e) (2020) (“No inter partes review will be instituted based on disclaimed claims.”). Of the remaining challenged claims, only claim 1 is independent. Claim 1 is reproduced below:” slip op. at 4
Claim construction§ 103 obviousnessPatents in suitUS 9,106,697 - Crowdstrike, Inc. v. Gosecure, Inc.Institution deniedPTAB · May 6, 2025 · IPR2025-00067 · APJ Garth D Baer · IPR · Institution
The Board denied institution for claims 1–23 because the cited art did not teach or suggest creating the claimed fingerprint at the virtual machine monitor.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. III. CONCLUSION After considering the evidence and arguments presented in the current record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’697 patent is unpatentable. We therefore do not institute trial on any challenged claims or grounds raised in the Petition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with Petitioner’s arguments. Claim 1 recites “a decoy computer system [that] comprises . . . a virtual machine monitor,” and “at the virtual machine monitor: . . . creating, from the stored activities, a fingerprint.” Ex. 1001, 19:4–22. Thus, the claim’s plain language requires creating a fingerprint at the virtual machine monitor, not just at the decoy system, as Petitioner asserts. When, as here, a claim term has “ordinary, simple English words whose meaning is clear and unquestionable,” we may not redraft those words to mean something different. Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1373–75 (Fed. Cir. 2004). Petitioner offers no explanation how one skilled in the art might read “at the virtual machine monitor” to mean at the decoy system, rather than at the virtual machine monitor. Although the claim’s plain language is decisive, we also disagree with Petitioner’s assertion that the ’697 patent’s specification because, as Patent Owner explains, the specification describes fingerprint generation inside and outside the virtual machine monitor. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Claim 1’s plain language, however, only covers the latter. Sur-reply 1–2; see id. at 2 (citing Ex. 1001, 6:65–7:2, 10:13–22). Last, Petitioner’s characterization of Patent Owner’s infringement allegations in the related district-court proceedings, even if correct, do not undermine the claim’s plain language.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Given the deficiencies outlined above, Petitioner has not shown that the prior art teaches or suggests creating a fingerprint at the virtual machine monitor as the challenged claims require. Thus, Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 10
Claim construction§ 103 obviousnessPatents in suitUS 9,106,697 - Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 5, 2025 · IPR2025-00070 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–21 on all five asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“MULTIPLE PETITIONS CHALLENGING THE ’872 PATENT In addition to challenging the claims of the ’872 patent with the instant Petition, Petitioner filed a petition in IPR2025-00068, which also challenged claims of the ’872 patent. IPR2025-00068, Paper 1 (“the ’68 Petition”). Petitioner ranked the instant Petition first and the ’68 Petition second. Paper 3, 5. Arguing that the circumstances here do not warrant two petitions, Patent Owner suggests that we discretionarily deny the instant Petition, stating that “[i]f the Board is inclined to institute either of [Petitioner’s] Petitions, [Patent Owner] respectfully submits the Board should institute IPR2025-00068.” Paper 8, 5. Because Petitioner ranks the instant Petition higher than the ’68 Petition, we decline to discretionarily deny this Petition due to Petitioner’s filing of the ’68 Petition.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 8 (Ex. 1003 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and 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 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872 - Crowdstrike, Inc. v. Gosecure, Inc.InstitutedPTAB · May 2, 2025 · IPR2025-00068 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Capalik and King.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–21 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Patent Owner argued that we should not institute both petitions. Paper 8, 1–5. Patent Owner argued that the challenged claims are not long and Petitioner’s concerns about the construction of “association” in limitation 1(b) are “contrived.” Id. at 1. Patent Owner contends that Petitioner could have addressed all of the challenged claims in one petition. Id. Noting that both the ’70 petition and the instant Petition challenge all claims of the ’872 patent, Patent Owner argued that the number of claims challenged does not necessitate multiple petitions. Id. at 2–3. Patent Owner also argued that Petitioner could have waited until closer to the statutory due the claim language “association” in the related district court proceeding. Id. at 4–5. Considering the facts holistically, we determine the totality of the circumstances here supports Petitioner’s position that two petitions are warranted. Petitioner has challenged a large number of claims directed to complex subject matter. And the task of challenging those claims is complicated by the potential for Patent Owner to argue for a narrow construction of “association” in limitation 1(b). Patent Owner’s suggestion that Petitioner would not have needed to file multiple petitions if it had waited longer to file a petition is not persuasive. Paper 8, 4–5. Patent Owner does not explain why a petitioner should be encouraged to delay the filing of its petition. See id. And the parties appear to agree that Patent Owner has not weighed in on whether “association” should be interpreted narrowly or broadly. Prelim. Reply. 8; Prelim. Sur-Reply 8. The present circumstances, considered as a whole, warrant two petitions challenging the claims of the ’872 patent.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner explains the applicable level of skill in the art as follows: As of June 24, 2010, a person of ordinary skill in the art (POSITA) would be a person having a bachelor’s degree in computer science, computer engineering, or an equivalent, as well as two years of industry experience. A POSITA would also have had a working knowledge of software security analysis and dynamic malware analysis. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. explanation of the level of skill in the art. See Prelim. Resp. 13. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’872 patent and 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 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We first look to the claim language itself. It recites “transmitting to one or more computer systems,” not transmitting to “devices.” Ex. 1001, 19:53. Although the claim language “one or more computer systems” may encompass “protected network devices,” we do not see a reason that its plain meaning would be limited to network devices, much less protected network devices. Nor do we see a reason that the plain meaning of “one or more computer systems” is limited to protected network devices to the exclusion of a network that includes protected network devices and one or more other components. In support of its suggestion that the claim language “one or more computer systems” excludes a combination of protected network devices and one or more other components, Patent Owner cites the claim language “for preventing future attacks, to the one or more computer systems.” Prelim. Resp. 20–24; Prelim. Sur-Reply 1–2. But Patent Owner does not provide reasoning or evidence persuading us to read the claim language more narrowly than its plain meaning, which encompasses preventing future attacks to a computer system that includes both protected network devices and one or more other components.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,954,872 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Apr 28, 2025 · PGR2024-00048 · APJ Stacey G White · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–6 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). Upon considering the evidence and arguments presented, we determine, as discussed below, that Petitioner has not demonstrated that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny1 Petitioner’s request to institute post-grant review of claims 1–6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Dr. Khatri, proposes a definition of the person of ordinary skill in the art. Ex. 2001 ¶ 24. Dr. Khatri, however, notes that his opinions would be the same under either his proposal or Petitioner’s proposal. Id. ¶¶ 25–26. Patent Owner states that, for purposes of the Preliminary Response, it “adopts Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 13 (citing Pet. 22–23; Ex. 2001 ¶¶ 22–26). We determine that the current record supports Petitioner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Petitioner’s description of an ordinarily skilled artisan. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the claim terms “MLC memory modules” and “SLC memory module.” Pet. 23–28. Patent Owner disagrees with Petitioner’s constructions, but does not contest them because it argues that construction of these terms is not necessary to resolve the parties’ disputes. Prelim. Resp. 14. Based on the record presented, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post- grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Federal Circuit has held that “[t]he written description requirement is met when the disclosure relied on for support ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted)). The written description inquiry is a question of fact, is context specific, and must be determined on a case-by-case basis. Ariad, 598 F.3d at 1351 (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon, 418 F.3d at 1357–58). Factors used to evaluate the sufficiency of a disclosure include: 1) “the existing knowledge in the particular field”; 2) “the extent and content of the prior art”; 3) “the maturity of the science or technology”; and 4) “the predictability of the aspect at issue.” Id. (citing Capon, 418 F.3d at 1359). As support for the term “memory space,” the ’612 patent explains that because “the SLC NAND flash is used to boost the lifetime (endurance) of the storage system, it can be considerably lesser in amount than the MLC NAND flash.” Ex. 1001, 5:20–23; see Ex. 2001 ¶ 51. As an example, the ’612 specification states that “a system may set SLC NAND flash equal to 12.5% or 25% of MLC NAND flash (total non-volatile memory storage space=MLC+SLC).” Ex. 1001, 5:23–25; see Ex. 2001 ¶¶ 51, 62. In addition, we find persuasive Dr. Khatri’s testimony that one of ordinary skill in the art would have understood that “there are two spaces—MLC and SLC—where data is stored, and the total memory space is the combination of the two.” Ex. 2001 ¶ 51. Further, the ’612 patent’s Figure 1 depicts “memory space,” e.g., dynamic random-access memory (DRAM) 20, one or more disks 24, MLC NAND flash memory module 26, and SLC NAND flash memory module 28. Ex. 1001, 5:37–45, Fig. 1; see Ex. 2001 ¶ 64. The ’612 patent’s Figure 4 also depicts “memory space,” e.g., NAND flash memory bank 56 comprising “a plurality of MLC NAND flash memory modules 60a and a plurality of SLC NAND flash memory modules 62a” and NAND flash memory bank 58 comprising “a plurality of MLC NAND flash memory modules 60b and a plurality of SLC NAND flash memory modules 62b.” Ex. 1001, 7:8–14, Fig. 4; see Ex. 2001 ¶ 64. On the record before us, we find the above noted disclosures to be sufficient to support the disputed claim language. For these reasons, the ’612 patent’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad, 598 F.3d at 1351.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,854,612 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–21 of the ’342 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’342 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that fields are mapped “to one another using normalized variables stored in a normalized variable data database” as required by claim 1.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a POSITA “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner present claim construction in the Petition or Preliminary Response. Pet. 9; see generally Prelim. Resp. Nonetheless, Petitioner contends that Patent Owner’s construction of “universal variable map” is too narrow, but does not appear to offer an alternative construction other than to state that a “universal variable map” includes “a database that links variables from different websites to each other.” See Reply 1-2 (emphasis omitted) (“PO’s arguments for why Halevy’s ‘form database’ is not a universal variable map are all premised on improperly narrowing the term’s scope by adding restrictions that are unsupported by the intrinsic record.”). In the Sur-Reply, Patent Owner reiterates that it has not proposed a construction for “universal variable map.” Sur-Reply 1 (“Patent Owner did not present any claim construction arguments regarding that term, nor does that term’s construction have any bearing on the arguments set forth in the POPR for denying the Petition.”). Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01272 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 14
- Skill levelSkill level board ownOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“While [Dr. Fox] asserts that Oldham’s external engine is the required “networked data source,” he does not identify any teaching in Oldham that there are any “field identifiers” in Oldham’s external engine. Dr. Fox then goes on to argue that “POSAs would have recognized that the SO-properties mapped to the keywords are determined ‘field identifiers of the networked data source stored in the universal variable data database’ based on the dynamic data because the SO-properties for each class are defined by the form engine and mapped to corresponding fields from various forms stored in the form database.” EX1003, ¶ 102. First, Halevy’s SO-properties obviously cannot be “field identifiers” of Oldham’s external engine, because Halevy’s SO-properties do not come from Oldham’s external engine. Rather, they are generated in Halevy’s system as part of the “database schema” of Halevy’s form database. See EX1006, [0038] (“In one embodiment of the present invention, the database describes web sources in terms of an ontology of classes and properties, which is referred to as the ‘search ontology’ (SO).”). In addition, Halevy’s SO-properties are not “field identifiers” at all. Rather, the SO-properties are simply search filters that assist Halevy’s search engine in determining a form’s degree of relevancy to the user’s keyword search query. See EX1006, [0137] (“[T]he system performs a lookup based on the structured query in the form database to identify forms of interest (step 608) and ranks these forms (step 610).”). Also I note that Dr. Fox argues elsewhere in his declaration that SO-properties are “normalized variables,” which even he recognizes are different from “field identifiers.” See, e.g., EX1003, ¶ 101 (“Halevy’s form engine determines field identifiers . . . by mapping keywords in the query to SO-properties (i.e., normalized variables) . . . .”). As described in the ’734 patent, “normalized variables” are used to create associations between field identifiers of different forms, but they are not themselves “field identifiers.” See EX1001, 15:65-16:3 (“In this way, once a site’s category is defined, the variable mapping exercise can be simplified to match which variables or identifiers match up with which normalized variable . . . .”). Thus, Dr. Fox fails to show any teaching or suggestion in the combination of Oldham and Halevy of the claim limitation “determining . . . field identifiers of the networked data source stored in the universal variable data database.” Ex. 2001 ¶¶ 59, 61–64 (underlining added). We adopt Dr. Malek’s testimony and reasoning above as our own.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“b. Halevy’s schema-mapping search engine Although Halevy’s schema-mapping system uses a common set of SO-properties for the form fields in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping for “mapping,” linking, or integrating the field identifiers (parameter names) of different forms on different websites to one another to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 30
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,152,734 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01269 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- BurdenNot shown unpatentable
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. For the reasons given below, we determine Petitioner has not established that Belanger and Halevy disclose, teach, suggest or otherwise render obvious independent claim 1 of the ’626 patent. We begin with a discussion of Belanger and Halevy. slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although Halevy’s schema-mapping technique maps each form field to a common set of SO-properties in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping to “link” or integrate form fields (parameter names) of different forms on different websites to each other to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,789,626 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’378 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,378 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36
§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · NautilusPatents in suitUS 11,830,546
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.