• Telefonaktiebolaget LM Ericsson / Ericsson Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Oct 26, 2023 · IPR2022-00730 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 22, 23, 30, 32, and 33 were not shown unpatentable because Pakzad did not disclose the claimed combined macro and femto timing information, and the obviousness grounds did not address that limitation.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “information from all three types of sources together or at the same time. Patent Owner argues that “a [person of ordinary skill in the art] would understand that this passage in Pakzad ‘any one of several sources’ confirms that Pakzad only uses a single signal source at a time.” PO Resp. 34 (citing Ex. 2002 ¶ 69). Dr. Chrissan testifies that he understands this disclosure to mean that “Pakzad teaches a single signal source at a time, not more than one.” Ex. 2002 ¶ 70 (emphasis added). We find Patent Owner’s interpretation, supported by Dr. Chrissan’s testimony, to be a reasonable reading of Pakzad’s disclosure. Dr. Chrissan further testifies that “Pakzad’s invention is about using both a course [sic] routing graph and fine routing graph to make computation of a motion model (e.g., a particle filter) more efficient,” and “Pakzad was not directed to leveraging a heterogenous network by incorporating both macro and femto cells concurrently.” Id. ¶ 68. We agree with Dr. Chrissan’s explanation for the lack of clear disclosure in Pakzad about which measurements Pakzad uses with its particle filter.” slip op. at 25

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related filed, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 21 (citing Ex. 1009 ¶ 23). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art, but adds that the person of ordinary skill in the art “may alternatively have additional years of practical and relevant work or research experience as substitution for less or different technical education, and vice versa.” See PO Resp. 17. We determine that the level of ordinary skill proposed by Petitioner is consistent with the ’819 patent and the asserted prior art. 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). We adopt Petitioner’s proposed level in deciding the patentability of the challenged claims.” slip op. at 9

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

    “claim 30 should be construed “to refer to the previously recited ‘femto base station timing information,’ ‘macro base station timing information,’ and ‘femto base station position information.’” PO Resp. 18. Patent Owner argues that its proposed construction is “based on at least three aspects of the intrinsic record: (1) the claim language itself; (2) guidance from the specification defining the disputed term; and (3) illustrative embodiments confirming the meaning of the disputed term.” Id. (citing Ex. 2002 ¶ 47). Specifically, Patent Owner contends that “the specification describes two embodiments that further confirm to a [person of ordinary skill in the art] that ‘the base station information’ consists of the [three types of information previously] recited.” Id. at 19–23 (citing Ex. 1001, 19:29–33, 20:50–54, Figs. 8, 9; Ex. 2002 ¶¶ 47–55).” slip op. at 10

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

    “More importantly, anticipation requires that the four corners of a single, prior art document describe every element of the claimed invention, and we are not persuaded that Pakzad describes the combinational use of the two different types of timing information as claimed. See Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (citing Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)). The Federal Circuit has made it clear that “it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371 (citation omitted) (emphasis added). In Net MoneyIN, although a prior art reference described two protocols, which when taken together, disclosed “all five links arranged or combined in the same way as claimed,” the Federal Circuit determined that the reference did not anticipate the claim. See id. Rather, the Federal” slip op. at 28

  Patent outcomesUS 8,958,819 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · Graham
  Patents in suitUS 8,958,819
• Palo Alto Networks, Inc. v. Centripetal Networks, Inc.No claims unpatentable
  PTAB · Feb 16, 2023 · IPR2021-01150 · APJ Stacey G White · IPR · Final written decision

  Claims 1–18 were not shown unpatentable as obvious over Paxton, Sutton, and Ivershen because the combination did not establish transmission responsive to the packet correlation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “level of skill in the art. Dec. 21. Patent Owner offers a different formulation in the Response, but neither party provides substantive argument as to why its proposed level of skill is correct. See Pet. 13; PO Resp. 12–13. We do not find a material difference between the parties’ proposals. Based on this record, we apply the level of skill laid out in our Institution Decision because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we find for the purpose of this Decision and based on the record before us, that a person of ordinary skill in the art at the relevant time would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and approximately 2–3 years of experience in the design or development of telecommunication systems, or the equivalent. We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 9

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

    “After review of the current record, we conclude that no express claim construction is necessary for the purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11

  • BurdenNot shown unpatentable

    “Patent Owner argues that this combination is insufficient to teach the disputed limitation. PO Resp. 28–44. Patent Owner contends that Petitioner does not explain why any such transmitting would be responsive to the correlation as required by the claims. Id. at 30. In particular, Patent Owner asserts that the proposed combination “would simply result in notifying administrators of potentially infected devices in reaction to finding that ‘a packet [has been] detected as communicated to/from a darknet address (postboundary).’” Id. (quoting Pet. 22). According to Patent Owner, this is not enough because “[t]he detection of darknet activity involves no correlation whatsoever . . . it simply involves a comparison of the original addresses information of a packet to a list of darknet addresses.” Id. Patent Owner further argues that the recited responsiveness also is not taught by Paxton, which identifies a source of packet transmission without teaching any actions that occur responsive to that identification. Id. at 31. This assertion is supported by Patent Owner’s Declarant, Dr. Goodrich, who opines that “Paxton does not disclose or suggest doing anything with the packet matching information unless and until malicious activity is sensed. Although I note that Petitioner argues that Paxton ‘generat[es] a match log including the identity of the packet source address,’ Paxton does not disclose doing anything responsive to, or in reaction to, generating this match log.” Ex. 2019 ¶ 83 (citing Pet. 39; Ex. 1004 ¶ 22). Petitioner responds by arguing that Patent Owner’s “assertion that Paxton does not disclose ‘doing anything responsive to correlating packets,’ is facetious: there would be no purpose in doing that determining at all if it was not recorded or otherwise made known.” Reply 5. Petitioner further contends that “Paxton expressly teaches creating a log and notifying a network administrator of the identified host.” Id. (citing Ex. 1004 ¶ 30, Fig. 2; Ex. 1003 ¶¶ 63, 119; Pet., 14–15, 40; Dec. 38–39). We, however, are not persuaded that this argument was articulated sufficiently in the Petition. Petitioner cites pages 14–15 of the Petition. That portion of the Petition states “[m]atching packets and identifying the true source of packet transmissions is useful for network security, providing a way to trace malicious activity sensed at the edge of a network and identify nodes infected with malicious content.” Pet. 14–15. It is true that Paxton states that the ability to identify the true source of a packet transmission “can provide a way to quickly identify nodes that are infected with malicious content, which can allow the network administrator to better identify the scope of malicious content.” Ex. 1004 ¶ 30. We find no argument in the Petition that asserts “allow[ing] the network administrator to better identify the scope of malicious content” means that a transmission is made (or any other action is taken) responsive to the correlation. Sutton also fails to fill in this gap. Petitioner argues that “Sutton discloses transmitting the indication of the first host (e.g., notifying an administrator) responsive to identifying a device associated with malicious activity.” Pet. 41. Sutton “monitors communications to identify access attempts to/from darknet addresses” and if such an attempt is found “a notification or other corrective action can be provided identifying such potentially malicious activity.” Id. (quoting Ex. 1007, code (57)). Sutton further states that if devices associated with malicious activity “reside within the enterprise network, a notification 355 can be provided to the enterprise network (e.g., a network administrator) indicating that such devices are potentially infected with malicious software code.” Id. (quoting Ex. 1007, 10:60–11:3). Sutton identifies malicious nodes by determining whether a communication is destined or originating from an address in the darknet address database. Ex. 1007, 6:15–22. Thus, if a darknet address is found then Sutton will transmit a message indicating the malicious presence. This leaves us with a correlation from Paxton with no specific actions taken postcorrelation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.” slip op. at 25

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

    “Patent Owner argues that this combination is insufficient to teach the disputed limitation. PO Resp. 28–44. Patent Owner contends that Petitioner does not explain why any such transmitting would be responsive to the correlation as required by the claims. Id. at 30. In particular, Patent Owner asserts that the proposed combination “would simply result in notifying administrators of potentially infected devices in reaction to finding that ‘a packet [has been] detected as communicated to/from a darknet address (postboundary).’” Id. (quoting Pet. 22). According to Patent Owner, this is not enough because “[t]he detection of darknet activity involves no correlation whatsoever . . . it simply involves a comparison of the original addresses information of a packet to a list of darknet addresses.” Id. Patent Owner further argues that the recited responsiveness also is not taught by Paxton, which identifies a source of packet transmission without teaching any actions that occur responsive to that identification. Id. at 31. This assertion is supported by Patent Owner’s Declarant, Dr. Goodrich, who opines that “Paxton does not disclose or suggest doing anything with the packet matching information unless and until malicious activity is sensed. Although I note that Petitioner argues that Paxton ‘generat[es] a match log including the identity of the packet source address,’ Paxton does not disclose doing anything responsive to, or in reaction to, generating this match log.” Ex. 2019 ¶ 83 (citing Pet. 39; Ex. 1004 ¶ 22). Petitioner responds by arguing that Patent Owner’s “assertion that Paxton does not disclose ‘doing anything responsive to correlating packets,’ is facetious: there would be no purpose in doing that determining at all if it was not recorded or otherwise made known.” Reply 5. Petitioner further contends that “Paxton expressly teaches creating a log and notifying a network administrator of the identified host.” Id. (citing Ex. 1004 ¶ 30, Fig. 2; Ex. 1003 ¶¶ 63, 119; Pet., 14–15, 40; Dec. 38–39). We, however, are not persuaded that this argument was articulated sufficiently in the Petition. Petitioner cites pages 14–15 of the Petition. That portion of the Petition states “[m]atching packets and identifying the true source of packet transmissions is useful for network security, providing a way to trace malicious activity sensed at the edge of a network and identify nodes infected with malicious content.” Pet. 14–15. It is true that Paxton states that the ability to identify the true source of a packet transmission “can provide a way to quickly identify nodes that are infected with malicious content, which can allow the network administrator to better identify the scope of malicious content.” Ex. 1004 ¶ 30. We find no argument in the Petition that asserts “allow[ing] the network administrator to better identify the scope of malicious content” means that a transmission is made (or any other action is taken) responsive to the correlation. Sutton also fails to fill in this gap. Petitioner argues that “Sutton discloses transmitting the indication of the first host (e.g., notifying an administrator) responsive to identifying a device associated with malicious activity.” Pet. 41. Sutton “monitors communications to identify access attempts to/from darknet addresses” and if such an attempt is found “a notification or other corrective action can be provided identifying such potentially malicious activity.” Id. (quoting Ex. 1007, code (57)). Sutton further states that if devices associated with malicious activity “reside within the enterprise network, a notification 355 can be provided to the enterprise network (e.g., a network administrator) indicating that such devices are potentially infected with malicious software code.” Id. (quoting Ex. 1007, 10:60–11:3). Sutton identifies malicious nodes by determining whether a communication is destined or originating from an address in the darknet address database. Ex. 1007, 6:15–22. Thus, if a darknet address is found then Sutton will transmit a message indicating the malicious presence. This leaves us with a correlation from Paxton with no specific actions taken postcorrelation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.” slip op. at 25

  Patent outcomesUS 10,530,903 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,530,903
• Honeywell International, Inc. / TCT Mobile (US) Inc. et al. v. 3g Licensing S.A.No claims unpatentable
  PTAB · Nov 14, 2022 · IPR2021-00908 · APJ Russell E Cass · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–7, 9–13, and 15–23 unpatentable as obvious over Philips46 alone or Philips46 and Nokia.

  RulingsFinal written decision

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

    “A claim “shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Neither party proposes a construction of any claim terms. Pet. 29; PO Resp. 15. We determine that it is not necessary to provide an express interpretation of any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”).” slip op. at 9

  • Skill levelSkill level board ownDecided for patent owner

    “In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art as including a Bachelor’s degree in electrical engineering, computer engineering, or a similar discipline with approximately two years of signal processing experience, which is supported by the declaration of Dr. Clark and the prior art of record. Inst. Dec. 12 (citing Ex. 1002 ¶¶ 70–72). We also agreed with Patent Owner that a combination of more experience in the field and less education or more education and less experience in the field may also suffice. Id. In its Patent Owner Response, Patent Owner states that it does not object to the level of ordinary skill we adopted in the Institution Decision. PO Resp. 9. For purposes of this Final Written Decision, we adhere to the level of ordinary skill adopted in our Institution Decision, which is consistent with the disclosures of the ’718 patent and the asserted prior art.” slip op. at 10

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

    “First, we find that Petitioner has not sufficiently shown that one of ordinary skill would have been motivated to swap the last two bits in the last row of the Philips46 table in order to provide more protection to the most significant bit (MSB). Even if we were to agree with Petitioner that one of ordinary skill would have understood that swapping the last two bits would have provided more protection to the MSB, Petitioner has not sufficiently shown that one of ordinary skill would have believed that such a change would be desirable. Patent Owner introduces evidence from Dr. Smith and the ’781 patent that there was “a tradeoff between BER and RMS error” and that “efforts to minimize RMS error and to minimize BER produce conflicting and incompatible results.” Ex. 1001, 11:38–44; Ex. 2006 ¶¶ 13, 43. These conflicting results are supported by the ’718 patent specification’s comparison of various codes (represented by C1, C2, embodiment 2, and embodiment 3), which found that the embodiment that had the best BER performance (C1) had the worst RMS error performance, and the embodiment with the best RMS error performance (embodiment 3) had the worst BER performance. Ex. 1001, 11:48–51, 11:58–61. We also find credible Dr. Smith’s testimony that “[a]dding all protection to just the MSB removes protection for all other bits,” which would be expected to reduce BER performance. Ex. 2006 ¶ 16.” slip op. at 26

  Patent outcomesUS 7,319,718 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,319,718
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00084 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 over Gleichauf, Ovadia, and Lewis because the petitioner did not sufficiently explain why a skilled artisan would have combined Gleichauf and Lewis as …

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “Dr. Reddy additionally testifies that “URL redirection is a well-known concept in HTTP traffic” (Ex. 1003 ¶ 24) and that “[a person of ordinary skill in the art] would have been familiar with URL redirection, which was a common technique used to forcibly provide an alternative response to a client’s request for a web page” (id. at ¶ 134). During the oral hearing, Petitioner also stated, citing the Reddy Declaration, that “it was well known to redirect traffic to a separate server.” Tr. 17:8–12 (citing Ex. 1003 ¶ 134). This, however, does not provide a sufficient explanation why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis. This rationale and all of the other reasons for the proposed combination proffered by Petitioner establish, at most, that Gleichauf and Lewis could have been combined to meet limitations [1.8] and [1.9], rather than a person of ordinary skill in the art would have been motivated to make the proposed combination. This is insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). We find, therefore, that Petitioner does not provide a sufficient reasoning to support obviousness of claim 1 based on the proposed combination.7 See Kinetic Concepts, 688 F.3d at 1366–67 (holding that “some kind of motivation must be shown from some source, so that the [trier of fact] can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented [invention]”)); InTouch Techs., 751 F.3d at 1348–49 (Fed. Cir. 2014) (“[The expert witness’s] testimony was nothing more than impermissible hindsight; she opined that all of the elements of the claims disparately existed in the prior art, but failed to provide the glue to combine these references.”).” slip op. at 36

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2022-00081 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable under § 103 because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Cisco Systems, Inc. / Forescout Technologies, Inc. et al. v. K.Mizra LLCNo claims unpatentable
  PTAB · Sep 19, 2022 · IPR2021-00593 · APJ Minn Chung · IPR · Final written decision

  Claims 1–3, 5–13, and 15–19 were not shown unpatentable because Petitioner did not sufficiently explain why a skilled artisan would combine Gleichauf and Lewis as proposed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of professional experience in the field of network communications, and more specifically, network security.” Pet. 10 (citing Ex. 1003 ¶ 18). Petitioner asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. (citing Ex. 1003 ¶ 18). Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill in the art. See generally PO Resp. Dr. Medvidovic, Patent Owner’s declarant, states that “[f]or the purposes of the subject IPR proceedings,” he “employ[s]” the level of ordinary skill in the art articulated by Dr. Reddy. Ex. 2009 ¶ 26. Based on the complete record, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention because Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13

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

    “The parties dispute construction of “trusted platform module” (Pet. 13–16; PO Resp. 5–6) but do not identify any issue that would turn on the construction of this term. See generally Pet.; PO Resp. Based on the complete record, for purposes of this Decision, we determine no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 14

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

    “Therefore, we find that Gleichauf alone provides all of the alleged benefits or advantages of the proposed combination of Gleichauf and Lewis identified by Petitioner. As discussed above, in the proposed combination of Gleichauf and Lewis, Gleichauf would be modified such that HTTP traffic from a quarantined device would not be redirected to a remediation server but instead would be redirected to a quarantine server, which serves an informational webpage to the user of the device, as taught by Lewis. Pet. 48–49; Pet. Reply 14 (citing Ex. 1005, 4:56–63, 21:1–12; Ex. 1007, 4:24– 31, 13:7–15; Pet. 48). Thus, Petitioner’s proposed combination contemplates (1) modifying Gleichauf’s network by adding a separate quarantine server, (2) modifying Gleichauf’s policy server to not redirect HTTP traffic from a quarantined device to a remediation server and to instead redirect the HTTP traffic to the quarantine server, and (3) providing a quarantine notice webpage to the user from the quarantine server, including a link to the remediation server, which the user can click on to access the remediation server. In addition, Gleichauf’s policy server would also need to be modified to not provide the notification messages to the user for HTTP traffic to avoid having both the policy server and the quarantine server provide the same or similar information displays to the user. Neither Petitioner nor Dr. Reddy explains adequately why a person of ordinary skill in the art would have been motivated to look to Lewis to introduce such significant changes to the architecture or design of Gleichauf’s network when Gleichauf alone already provides all of the alleged benefits or advantages of the proposed combination identified by Petitioner. See Pet. 26–29; Pet. Reply 14–16; Ex. 1003 ¶¶ 66–71. Thus, based on the complete record, we find that the alleged benefits or advantages of the proposed combination identified by Petitioner do not provide sufficient basis for establishing why a person of ordinary skill in the art would have been motivated to combine Gleichauf and Lewis in the manner proposed by Petitioner. See In re Anova Hearing Labs, Inc., 809 F. App’x 840, 843 (Fed. Cir. 2020) (finding that the Board’s general statements that a person of ordinary skill in the art would have combined the prior art references to address the problem of occlusion effect in hearing aids was insufficient when the Board does not explain why a person of ordinary skill in the art would have been “motivated to modify Brown, which already includes vents, to address occlusion effect”) (non-precedential); cf. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012) (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”).” slip op. at 34

  Patent outcomesUS 8,234,705 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,234,705
• Intel Corporation v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jul 8, 2020 · IPR2019-00049 · APJ Aaron W Moore · IPR · Final written decision

  Claims 2–8 and 11 were not shown unpatentable: Ground 1 failed under the adopted carrier-aggregation construction, and Ground 2 lacked a sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute Petitioner’s contention that a person of ordinary skill in the art ‘at the time of the alleged invention would have had at least an M.S. degree in electrical engineering (or equivalent experience) and would have had at least two years of experience with the structure and operation of RF transceivers and related structures (or the equivalent).’” PO Resp. 11 (quoting Pet. 34). We adopt Petitioner’s characterization of the level of ordinary skill in the art, which we find to be generally consistent with the disclosure of the ’356 patent.” slip op. at 12

  • 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 Petitioner’s analysis because the claim recites both “aggregation” and “transmissions sent on multiple carriers,” indicating that “aggregation” must mean something more than the presence of multiple carriers. We thus do not agree that “aggregation” simply means that multiple carriers are present in the input RF signal. We conclude that the language of the claim itself is more supportive of Patent Owner’s proposed construction, which gives meaning to the term “aggregation” beyond the concept of multiple carriers, which is already in the claim.” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “construction is “consistent” with a person of ordinary skill in the art’s understanding of the term. Id. at 31; see Ex. 1202 ¶ 62. Dr. Fay, however, cites no evidence other than the specification to support the idea that “carrier aggregation” is simply simultaneous operation on multiple carriers. Nor, we find, does he persuasively explain how his proposed construction accounts for “aggregation.” The mere presence of multiple carriers in the input signal cannot be “aggregation” of the carriers because the claim already recites “multiple carriers” in the input signal. Aggregation must mean something more than multiple carriers existing at the same time.4 Patent Owner cites Dr. Foty for support of its proposed construction, and Dr. Foty provides citations to various pieces of supporting extrinsic evidence. See PO Resp. 18–23; Ex. 2024 ¶¶ 94–110 (citing Ex. 1204, 10; Ex. 2013, 3:19–22 (“One technique for providing additional bandwidth . . . is through the use [of] carrier aggregation of multiple smaller bandwidths to form a virtual wideband channel at a wireless device.”); Ex. 2018, 3:27–62 (describing “carrier aggregation of multiple smaller bandwidths to form a 4 We agree with Petitioner that its proposed construction is not “inconsistent” with the meaning that this term had in the art, but find that Patent Owner’s proposed construction is both “consistent” with and better captures what the term would have meant to one of skill in the art at the time of the application.” slip op. at 22

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

    “independent claim 1 and, therefore, include its limitations, including, among other things, that “the input RF signal employ[s] carrier aggregation comprising transmissions sent on multiple carriers at different frequencies to a wireless device.” Petitioner’s Ground 1 is based on its construction of “carrier aggregation” as meaning “simultaneous operation on multiple carriers.” See, e.g., Pet. 51–52 (arguing that “Jeon teaches ‘a dual-band signal containing two different frequencies concurrently,” which teaches carrier aggregation). Because, for the reasons detailed above (see Section II.B), we find “carrier aggregation” to additionally require that the carriers “are combined as a single virtual channel to provide higher bandwidth,” we find that Petitioner has not shown claim 1 to be unpatentable and, thus, has not shown that dependent claims 2–8 and 11 are unpatentable in view of Jeon and Xiong.7” slip op. at 26

  Patent outcomesUS 9,154,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,154,356
• Unified Patents Inc. v. Velos Media, LLCNo claims unpatentable
  PTAB · May 12, 2020 · IPR2019-00194 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–3, 5, 13–15, and 17 were not shown unpatentable because the asserted grounds failed to establish the claimed scan passes or scan order.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts a person of ordinary skill in the art at the time of the application resulting in the ’449 patent “would have had at least the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or a related subject and two or more years of experience in the field of video coding.” Pet. 23–24. Patent Owner does not contest that definition of a skilled artisan or offer a different one. Petitioner’s definition is consistent with the descriptions in the ’449 patent and the asserted art, and we adopt it.” slip op. at 5

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

    “Although Petitioner proposes a construction for “information indicating levels of significant coefficients” (Pet. 27), we determined in the Institution Decision that there was no need to construe the phrase. Inst. 5. Absent any indication from the parties why such a construction would impact our analysis, we reach that same conclusion here. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “the phrase “in a first scan pass” and shows the proper grammatical relationship. That limitation recites “coding information indicating levels . . . according to the scan order used for coding the information indicating significant coefficients in a second scan pass.” The phrase “in a second scan pass” serves not to frame the scan order—the scan order for coding level information must be the same as the scan order for coding significance information. Rather, “in a second scan pass” relates to the phrase “coding information”—no other understanding of “in a second scan pass” would make sense. For internal consistency, that same understanding must apply to the first limitation such that “in a first scan pass” frames the step of “coding information.” Thus, the claim language requires coding significance information in a first scan pass, and then coding level information in a second scan pass, where each scan pass uses the same scan order.” slip op. at 8

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

    “We find Cheon’s disclosure regarding a purported second scan is insufficient to carry Petitioner’s burden. The primary disclosure Petitioner relies on states only that “[l]evel information of an effective coefficient . . . is encoded after the significance map is encoded.” Ex. 1003 ¶ 175. That does not expressly state that a second scan is performed to encode the level information. Petitioner is left relying on a statement by its declarant that a person of skill would have understood to perform a second scan pass when encoding the level information. Pet. 61. But Petitioner’s declarant provides no explanation and instead simply makes the conclusion. Ex. 1002 ¶ 127. We do not afford significant weight to such a conclusory statement. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We are left with the possibility that Cheon’s paragraph 175 discloses a second scan, but that does not persuade us that Cheon makes an adequate disclosure to teach a second scan. In this regard, we credit the testimony of Patent Owner’s declarant that skilled artisans would have understood Cheon’s paragraph 175 to teach a single scan pass. Ex. 2034 ¶¶ 158–159.” slip op. at 11

  Patent outcomesUS 9,338,449 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,338,449
• 3shape Medical A/S v. Sirona Dental Systems GmbHNo claims unpatentable
  PTAB · Jun 21, 2017 · IPR2016-00481 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–10 were not shown unpatentable: Mushabac did not anticipate claims 1–5 and 9–10, and the asserted combinations did not render claims 1–8 obvious.

  RulingsFinal written decision

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

    “We determine that only the following claim phrase requires explicit construction for purposes of this Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Person of Ordinary Skill in the Art Petitioner provides evidence that a person of ordinary skill in the art (“POSA”) is someone with a D.M.D. (Doctor of Medicine in Dentistry or Doctor of Dental Medicine) or D.D.S. (Doctor of Dental Surgery) and at least several years of experience with 3-D technology used in dental implant treatment, planning, and surgery. Pet. 9–10 (citing Ex. 1004 ¶¶ 63–66). Alternatively, such a person may have a computer engineering degree or be a trained dental laboratory technician having substantial experience with 3-D technology and software applications used in dental implant treatment, planning, and surgery. Id. Patent Owner has accepted Petitioner’s definition of a POSA for purposes of this IPR. We adopt and apply Petitioner’s definition of a POSA in this Decision.” slip op. at 9

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

    “2. Analysis of “optical measuring of the visible surfaces of the jaw” Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Dr. Ganz agreed under cross-examination that “Mushabac optically measures the teeth [a]nd then it uses … bone sounding to measure the surfaces of the jawbone.” Ex. 2026, 252:11–20. When directly asked where a three-dimensional optical measuring of visible surfaces of the jaw was “stipulated” in Mushabac, Dr. Ganz could not identify any passage to support that assertion made in paragraph 100 of his Declaration. Id. at 248:16–252:20. We find Dr. Ganz’s cross-examination testimony to be highly persuasive and consistent with the disclosures in Mushabac and the testimony of Dr. Erickson. For the reasons given above, we determine that Mushabac does not expressly disclose an “optical” (light-based) measurement of the “visible surfaces of the jaw” in three dimensions, as recited in claim 1 of the ’006 patent.” slip op. at 16

  Patent outcomesUS 6,319,006 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.

  RulingsFinal written decision

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

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11

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

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14

  Patent outcomesUS 7,165,927 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,165,927

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.