• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · Jun 30, 2016 · IPR2015-00377 · APJ Bryan F Moore · IPR · Final written decision

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

  RulingsFinal written decision

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

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

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

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

  • Obviousness (§103) › KSR rationalesNot shown unpatentableUnpatentableMixed

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

  • Skill levelSkill level board ownDecided for petitioner

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

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

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

  RulingsFinal written decision

  • BurdenMixed

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

  • Skill levelSkill level board ownDecided for patent owner

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

  • Expert testimonyOther

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

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

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

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

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

  RulingsFinal written decision

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

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

  • Skill levelOther

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

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

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

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

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

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

  • BurdenMixed

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

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

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

  • Strike new argumentNew argument consideredDenied

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

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

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

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

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

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

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

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

  Patent outcomesUS 8,359,501 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,359,501
• Sandisk Corporation v. Netlist, Inc.Some claims unpatentable
  PTAB · Dec 14, 2015 · IPR2014-00970 · APJ Linda M Gaudette · IPR · Final written decision

  Claims 1, 14, 15, 19–25, and 27–34 are unpatentable; the Board found other challenged claims not shown unpatentable on the grounds decided.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference in the opinions of the two experts is that Dr. Sechen believes a person of ordinary skill in the art would have an additional four years of experience, education, or a combination of the two, beyond that proposed by Dr. Alpert. See Ex. 1009 ¶ 7. According to Dr. Alpert, the difference in the proposed levels of ordinary skill in the art is not material to any dispute over claim construction or patentability in this inter partes review. Id. We accord greater weight to Dr. Alpert’s opinion as to the level of ordinary skill in the art because he has experience in both teaching students and working with engineers in the industry, while Dr. Sechen’s experience is primarily in teaching. Compare Ex. 1007 ¶¶ 7, 21 with Ex. 2012 ¶¶ 3, 5. Moreover, based on our review of the ’434 patent and the types of problems and solutions described in the ’434 patent and cited prior art, we agree with Dr. Alpert’s opinion on the level of ordinary skill. Accordingly, we find that a person of ordinary skill in the art at the time of the ’434 patent would have a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” slip op. at 10

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

    “The above disclosure uses the term “operable independently” to describe the data handlers as being discrete and functioning without being physically or logically connected to each other. Based on our review of the ’434 patent, the specification and claim 27 both use the term “operable independently” in the same manner, i.e., to describe a feature of the data handler that is distinct from its data generation feature. We agree with Petitioner, therefore, that when interpreted in the context of the ’434 patent in its entirety, the claim term “operable independently” “merely means that each data handler can operate without influence or control by any of the other data handlers.” Reply 5. The ’434 patent specification uses the term “operable independently” in accordance with its plain and ordinary meaning, and we find no basis for applying the narrower construction advanced by Patent Owner to any of the challenged claims. Accordingly, we interpret “operable independently” as “operable without influence or control by another.” See Cuozzo, 793 F.3d at 1278–79.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the above description in Averbuj, we agree with Patent Owner that Averbuj describes memory interfaces (the alleged data handlers) that are configured to produce address and control signals, and that Averbuj describes producing address and control signals in certain circumstances, e.g., when Averbuj’s sequencer (the alleged control module) specifies writing data in a particular pattern that requires transformation to conform to a particular configuration of a memory module. See PO Resp. 33. We also agree with Petitioner, however, that Averbuj’s memory interfaces are further configured to apply to the memory modules the same address and control signals received from, and produced by, the sequencers for testing (see Reply 15), e.g., when the sequencer sends signals that can be applied, without modification or transformation (see Ex. 1003 ¶ 56), directly to a memory module irrespective of its physical configuration. Thus, Petitioner has shown, by a preponderance of the evidence, that Averbuj’s sequencer meets the limitation of “a control module configured to generate address and control signals for testing the memory devices” as recited in challenged independent claims 1, 20, and 29 of the ’434 patent.” slip op. at 41

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

    “As discussed in Section IV.B.2.e., a petition must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent” (37 C.F.R. § 42.22(a)(2)), and “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response” (37 C.F.R. § 42.23(b)). We agree with Patent Owner that the Reply does more than merely respond to or rebut arguments made in Patent Owner’s Response; rather, it sets forth a theory that was not presented clearly in the Petition. Patent Owner’s position is supported by the fact that Dr. Sechen, whose skill level is at least (and appears to exceed) that of the ordinary artisan, apparently was unable to envision how Huang and Averbuj could be combined. Further, Dr. Alpert’s second declaration includes, at a minimum, opinions as to the understanding of the ordinary artisan with respect to the teachings of Huang and Averbuj that were not presented in his first declaration. In our judgment, consideration by the Board of the above-noted arguments in the Reply and evidence presented in Dr. Alpert’s second declaration in support thereof would be improper under 37 CFR § 42.23 and unfair to Patent Owner. We have, however, reviewed and considered the arguments in the Petition and evidence therein, and are in agreement with Patent Owner that Petitioner has not provided adequate explanation or evidence to support its contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining Huang and Averbuj. Accordingly, Petitioner has not met its burden to show, by a preponderance of the evidence, that claims 7–12, 17, 18, 20–25, 27, 28, and 30–35 would have been unpatentable over Huang and Averbuj.” slip op. at 59

  Patent outcomesUS 8,001,434 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,001,434
• Finjan, Inc. v. Fireeye, Inc.Some claims unpatentable
  PTAB · Jul 10, 2015 · IPR2014-00492 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1, 3–7, 17, 18, 20, and 22–30 are unpatentable; claims 8, 12–14, 16, and 19 were not shown unpatentable, chiefly because the replayer-configuration limitation was not established.

  RulingsFinal written decision

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

    “that replaying the transmission of data requires replaying the transmission to a destination device such as a virtual machine. However, we do not agree that this is the broadest reasonable interpretation of these phrases. For example, claim 1 recites “replay transmission of . . . data copied from the communication network to a destination device.” The term “replay” appears logically and grammatically to apply to the term “transmission,” which immediately follows “replay.” Further, the term “transmission” is modified by the following phrase “of the suspicious, flagged network data,” which describes the “transmission” as a transmission of suspicious, flagged network data. Claim 1 further describes the “data” as “copied from the communication network to a destination device.” Thus, we read the phrase “copied from the communication network to a destination device” as applying to “data,” and not requiring that “replay” occurs to a destination device. Similarly, we read the corresponding language in claim 28 as applying the phrase “copied from the network to a destination device” to the “copied network data” and not to “replay transmission.” Additionally, for claim 17, we read the claim language “which was copied from the communication network to a destination device” to apply to “copied network data” and not to “replaying transmission.” Our reading of the claim language is consistent with the disclosure of the ’553 patent. The ’553 patent uses the term “destination device” to describe original destination device 710 that receives the transmission of data from Source Device 705 via Communication Network 720. Ex. 1001, 26:18–43, 29:56–60, Figs. 7, 10. Further, the sections of the ’553 patent cited by the Patent Owner do not support Patent Owner’s proposed interpretation of these phrases. Column 29, lines 36 through 42 do not refer to a destination device. Column 29, lines 56 through 60 disclose that virtual machine 815 simulates destination device 710. In other words, the ’553 patent does not teach that virtual machine 815 is “a destination device,” instead it teaches that a virtual machine may simulate or mimic the original destination device. Id. at 29:56–60, Fig. 10. Additionally, we note that to the extent Patent Owner contends the recited replay phrases require replay to a virtual machine, the claim language does not recite a virtual machine.” slip op. at 11

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

    “Patent Owner further argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 24– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 22–23. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, we find that Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 17 would have been obvious over Kaeo and Venezia.” slip op. at 21

  • BurdenNot shown unpatentable

    “Additionally, we note that in Petitioner’s Reply, Petitioner states Patent Owner’s arguments are conclusory and “cannot overcome the evidence cited by the Petition nor the Board’s analysis of that evidence.” Reply 14 (citations omitted). For clarity, we reiterate that in an inter partes review, the burden is on the Petitioner to show, by a preponderance of the evidence, that a claim is unpatentable. Our discussion in the Decision to Institute was based on a preliminary record at that stage of the proceeding and any decision to institute review of a claim under any ground does not create a presumption of unpatentability or absolve the Petitioner of the burden ultimately to satisfy the required showing for unpatentability. Based on the complete record before us, we are not persuaded Petitioner has met its burden for claim 8. Accordingly, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that claim 8 would have been obvious over Kaeo, Venezia, and Chen. Claim 12–14 and 16 depend from claim 8. Ex. 1001, 32:5967, 33:57. For the same reasons, we are not persuaded that claims 12–14 and 16 are unpatentable over Kaeo, Venezia, and Chen.” slip op. at 31

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “declarant, Dr. Jaeger, testifies that Liljenstam already teaches “flagged at least a portion of the analyzed copy of the network data” because Liljenstam’s collects suspicious copied packets in binary tcpdump format for replay using TCPReplay. See Liljenstam at 4 (“Instrumented routers in the Internet send copies of ICMP type 3 messages to the DIB:S system which correlates and analyzes the data…..As shown in Figure 3, all packets arriving to the DIB:S system in the model are dumped to a file in binary tcpdump format.”) (FJN 1007). At the same time, Dunlap’s ReVirt replay logged records saved to disk in syslog format. Dunlap at 7 (“Log records are added and saved to disk in a manner similar to that used by the Linux syslogd daemon.”) (FJN 1008). Notably, one of skill in art at the time understood that data in tcpdump files can be easily converted into syslog format. See Boubalos at 1 (providing an automated utility to “extract syslog packets from tcpdump files”) (FJN 1013). Thus, no technical impediment existed for Dunlap’s ReVirt to replay Liljenstam’s collection of packets in binary tcpdump format. Ex. 1003 ¶¶ 475–76 (emphasis omitted). We credit Dr. Jaeger’s testimony and are persuaded Petitioner presents sufficient evidence to support a finding that a person of ordinary skill in the art would have been able to modify Dunlap’s ReVirt to replay Liljenstam’s packets. Further, we are persuaded that Petitioner has articulated sufficient reasons for the combination of Dunlap and Liljenstam. For example, Petitioner asserts Dunlap’s replay to a virtual machine enhances Liljenstam’s replay by maintaining the integrity of the compromised system. Pet. 29–30.” slip op. at 43

  Patent outcomesUS 8,171,553 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,171,553
• Finjan, Inc. v. Fireeye, Inc.Some claims unpatentable
  PTAB · Jul 10, 2015 · IPR2014-00344 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–4, 6–8, 19, 20, 22–25, and 27–29 are unpatentable under §103; claim 21 was not shown unpatentable because the Chen ground did not establish the replayer limitation.

  RulingsFinal written decision

  • BurdenMixed

    “determine Petitioner’s arguments are not persuasive. Although Chen discloses forwarding suspicious packets to a clone, Petitioner has not explained sufficiently how forwarding packets teaches or suggests “configuring a replayer to transmit . . . data to the virtual machine.” Moreover, Petitioner does not explain how Chen’s logging disclosure (Ex. 1009, 2–3) applies to configuring a replayer. At the oral hearing, Petitioner was asked to explain its reliance on Chen for this limitation.” slip op. at 31

  • Skill levelSkill level board ownDecided for petitioner

    “2. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the art would have the following education and/or experience: a recent degree in a field such as computer science or computer networking and two or more years of experience in the computer networking or computer security industry. PO Resp. 17; Ex. 1030 ¶ 33. “Alternatively, in lieu of recent formal education, a person of ordinary skill in the art would have had six or more years of relevant experience in the computer networking or computer security industry.” Id. This level of ordinary skill in the art is consistent with the ordinary skill reflected in the prior art of record, which is directed to computer networking and computer security systems. For example, Venezia and Kaeo both disclose intrusion-detection-systems. Ex. 1005; Ex. 1006. With this level of ordinary skill in mind, we now turn to the analysis” slip op. at 14

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

    “1. flag or flagging (Claims 1 and 19) For the purposes of our Decision to Institute, we determined that the broadest reasonable interpretation of the terms “flag” and “flagging” is “identify” and “identifying.” Dec. 7. Neither party disputes this interpretation. Pet. 5; PO Resp. 12. Based on the complete record now before us, we discern no reason to change the interpretation; thus, we adopt our previous analysis and interpret “flag” and “flagging” to mean “identify” and “identifying,” respectively.” slip op. at 6

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

    “Next, Patent Owner argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 25– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 26. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 19 would have been obvious over Kaeo and Venezia.” slip op. at 22

  Patent outcomesUS 8,291,499 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,291,499
• QSC Audio Products, LLC v. Crest Audio, Inc.Some claims unpatentable
  PTAB · May 1, 2015 · IPR2014-00131 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–15, 18, 19, 21, and 24–26 are unpatentable under § 103; claims 20 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1006, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (IPR2014-00129, Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and currently is designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’544 Patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less experienced than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 15–16. Patent Owner’s arguments are unpersuasive, because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art. Finally, Patent Owner argues that Dr. Ellis spent an unreasonably short amount of time reviewing this case before providing his opinion, i.e., only ten hours. PO Resp. 17–18. We find that the amount of time Dr. Ellis chose to spend with the case likely is based on his experience with the subject matter and the difficulty of the subject matter. Thus, we are not persuaded by Patent Owner’s argument that the time spent on the proffered opinion affects the weight we give his opinions.” slip op. at 6

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

    “signal processing function programs and program data for defining function parameters.” Ex. 1001, 6:43–45. Thus, the Specification suggests that both the functions and parameters are transmitted to the DSP. Additionally, the Federal Circuit, when faced with similar claim language, determined that the phrase “at least one” followed by a list of categories separated by “and” rather than “or” suggests a conjunctive list in which each one of the members of the list is necessary to satisfy the claim. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885–86 (Fed. Cir. 2004) (“A common treatise on grammar teaches that ‘an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.’” (quoting William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000)). SuperGuide points out that each term in the list embraces a different category, each of which must take on a chosen value: “Every disclosed embodiment teaches that the user must choose a value for each designated category.” Id. at 887. That is the case here where functions have associated parameters. For the above reasons, consistent with the plain English meaning and the Specification, we construe “at least one of a signal processing function and a signal processing function parameter” to require that both a signal processing function and a signal processing parameter must be present in the prior art to meet that claim limitation.” slip op. at 8

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

    “Patent Owner does not assert that a removable connection itself is incompatible with Sudo. Rather Patent Owner asserts that the specific connections used by Krokstad are incompatible with Sudo. See PO Resp. 36. Patent Owner misses the point. The obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. As the Supreme Court recognized, in many cases a person of ordinary skill “will be able to fit the teachings of multiple patents together like pieces of a puzzle,” recognizing that a person of ordinary skill “is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Both parties’ declarants agree that Sudo’s high-speed connection could be implemented using a PCI bus, which is a removable connection. Ex. 2002, 178:10–17; Ex. 1012, 93:1–94:19. Thus, given the motivation to create a removable connection, such as the one disclosed in Krokstad, we are persuaded that implementation of that connection in Sudo would not render it unsuitable for its intended purpose. Thus, for the reasons stated above, Petitioner has shown by a” slip op. at 14

  Patent outcomesUS 5,652,544 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 5,652,544
• Microsoft Corporation v. Enfish, LLCSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2013-00562 · APJ Scott A Daniels · IPR · Final written decision

  Claims 31, 41, and 42 are unpatentable: claim 31 is anticipated by Chang, and claims 41 and 42 are obvious over Chang with Webb and Chang with Horn, respectively.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner

    “implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. and Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the other portions of the ’604 patent specification that Enfish identifies.” slip op. at 11

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

    “We determine that adopting Enfish’s proposed construction without further context would create ambiguity. Additionally, limitations are not to be read into the claims from embodiments in the specification. See In re Van Geuns, 988 F.2d 1181 at 1184. Furthermore, we agree with Microsoft that Enfish relies on insufficient extrinsic evidence for support, for example, that an OID is “immutable.” We also note that Enfish’s contentions are not commensurate with the scope of the claims because each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not recite using an OID to retrieve data from memory. We, therefore, determine that the construction of “OID” in the Decision to Institute should not be changed.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We give little weight to Dr. Hosking’s testimony with respect to the limitations in claim 34 because he does not provide an explanation or evidence as to why Dickerson’s synchronization of data in the same column across separate databases teaches reciprocal synchronization between columns in the same table. Dr. Hosking states that a person of skill in the art would be motivated to combine Chang and “the synchronization concept as taught in Dickerson in the case that similar elements were to be reciprocally synchronized.” Ex. 1022 ¶ 225. The premise of this argument is the assumption that Dickerson’s synchronization across separate databases is the same as synchronizing two logical columns reciprocally in the same database table. Dr. Hosking does not provide support for this assumption. This argument, therefore, does not sufficiently explain why mirroring data across separate databases leads to data synchronization between logical columns in the same table. Dr. Hosking’s testimony does not explain why, or how, one of ordinary skill in the art would use the database management disclosed by Chang in cooperation with the linked database elements between separate databases to achieve reciprocal synchronization “to achieve such coordination of the data” between logical columns in the same table. See id. at ¶¶ 283–294.” slip op. at 41

  • Skill levelOther

  Patent outcomesUS 6,151,604 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,151,604

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.