- PTAB · Sep 12, 2024 · IPR2024-00620 · APJ John A Hudalla · IPR · Institution
Instituted IPR on claims 1–8, 14–22, and 25 on all asserted grounds after finding a reasonable likelihood of prevailing on the Tobita obviousness grounds and declining General Plastic denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a relevant technical degree in Electrical Engineering, Computer Engineering, Materials Science, Physics, or the like, and experience in active matrix display design and electroluminescence.” Prelim. Resp. 16 (citing Ex. 2019 ¶ 36). Patent Owner criticizes Petitioner’s proposed definition because it “entails only general ‘circuit design’ experience with no experience in active matrix display design and electroluminescence, the subject matter of the ’593 Patent.” Id. at 17; see also Ex. 2019 ¶¶ 38–39 (Dr. Wolfe’s testimony regarding the same). In particular, Patent Owner argues that “[i]mportant aspects and considerations of the pixel circuit design are unique to the context of active matrix display design and to electroluminescent displays.” Prelim. Resp. 17 (citing Ex. 2019 ¶ 38). Patent Owner additionally notes that the Administrative Law Judge (ALJ) in the ITC Investigation adopted Patent Owner’s definition. Id. at 16–17 (citing Ex. 2018, 12). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. Although “[t]he challenged patent pertains generally to the field of OLED displays,” it is directed “more particularly to the circuitry used to drive and control the pixels that comprise the light-generating elements of the display.” Ex. 1003 ¶ 29; see also Ex. 1001, 1:16– 18 (describing the Field of the Invention as relating to “a stage circuit and an organic light emitting display using the same”). Moreover, we note, for example, that claim 1 does not include any limitations directed to “active matrix displays” or any other particular type of display, which suggests that an ordinarily skilled artisan need not have had specific experience designing such displays. See Ex. 1001, 9:43–45 (reciting “[a] stage circuit”). In addition, Patent Owner’s proposed definition is imprecise because it does not quantify the amount of experience possessed by an ordinarily skilled artisan. Therefore, at this stage, we adopt Petitioner’s definition because we find it to be more consistent with the teachings of the ’593 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededOther
“For purposes of this Decision, we apply the same construction as the ITC ALJ, i.e., that controlling the voltage of the second node does not require the voltage of the second node to be determined by the first driver alone. This is supported by contrast with another limitation in claim 1, which expressly recites direct control: “the signal of the third input terminal directly controls.” Ex. 1001, 9:58 (emphasis added). This is also supported by a paragraph in the Specification of the ’593 patent explaining that the Specification uses the word “directly” in contexts where the same is intended. Id. at 4:19–26. Further, as noted by the ITC ALJ, the Specification of the ’593 patent states that the second driver “controls the voltage on the first node” where such control is accomplished in conjunction with the outputting unit. Ex. 2018, 31–32 (citing Ex. 1001, 5:60–62, claims 1, 15). This supports the ITC ALJ’s understanding with respect to the first driver, i.e., that control can occur in conjunction with other elements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Specifically, Petitioner relies on the timing diagram in Figure 21B of Kimura to illustrate the operation of the circuit in Figure 27C. Pet. 19 (reproducing Ex. 1004, Fig. 21B). Petitioner acknowledges that the timing diagram “is not specific to the device of Figure 27C.” Id. Still, Petitioner contends the Figure 27C circuit “would (or at least obviously could) be supplied with input signals in the same manner and with the same timing” because it includes “the same input and output lines and many of the same transistors as Kimura’s other circuits.” Id. (citing Ex. 1003 ¶¶ 160–165). According to the timing diagram, the potential of node 13 (V13) is shown at its highest level during period D. See Ex. 1004, Fig. 21B. Petitioner also cites Kimura for teaching that “the potential of the node 13 becomes an H level.” Pet. 18 (quoting Ex. 1004 ¶ 256). Yet Kimura describes the Figure 27C circuit’s operation at period D differently: “[I]n a period D, the potential of the node 13 can be lowered. Therefore, dielectric breakdown or deterioration of the transistor connected to the node 13 (e.g., the transistor 102, the transistor 203, the transistor 205, or the transistor 206) can be prevented.” Ex. 1004 ¶ 286 (emphasis added). And Petitioner cites this very teaching in its analysis of limitation [1-B]. See Pet. 20–21. This inconsistency undermines Petitioner’s argument that “the device of Figure 27C . . . would (or at least obviously could) be supplied with input signals in the same manner and with the same timing.” Id. at 19. In light of this inconsistency, and in the absence of a sufficient explanation as to why Kimura’s teachings about different circuits apply to the Figure 27C circuit on which Petitioner relies, we find Petitioner’s analysis of claim 1 to be deficient. Thus, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over Kimura.” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDecided for petitioner
“presents facts that are different from those in General Plastic because Petitioner here did not use a prior Board decision or a prior preliminary response as a roadmap. Given the lack of road-mapping specific to our proceedings, we find that Factor 3 weighs strongly against exercising discretion to deny institution. Further, we note that “factors 1–3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 19 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”). Although Patent Owner alleges concerns under Factor 2 insofar as Petitioner knew or should have known of the asserted references at the time of the petition in IPR2023-01221 (Prelim. Resp. 9–12; PO Prelim. Sur-reply 2), we find such concerns to be of minimal significance where there is no road-mapping. Thus, we consider Factor 1 in conjunction with Factors 2 and 3 (see Code200 at 5) and find that Factors 1– 3 weigh against exercising discretion to deny institution. Similarly, the timing of the second petition in relation to the filing of the first petition (Factor 4), and when petitioner learned of the prior art (Factor 5), are more pertinent to the situation where the second petition is filed by a party using prior art allegedly newly discovered after receiving the Board’s unfavorable decision, as was the case in General Plastic, or after a preliminary response was filed in the first case. General Plastic at 10. That is not the situation before us here. We also do not agree with Patent Owner (see Prelim. Resp. 4–9) that the interplay between the instant case and the ITC Investigation implicates the same concerns from General Plastic about abuse or gamesmanship from multiple, staggered petitions. See General Plastic at 16–17. As in Code200, we find that “Patent Owner’s concerns of fairness are outweighed by the benefits to the patent system of improving patent quality by reviewing the merits of the challenges raised in the petitions, which have not been addressed to date.” Code200 at 6. Thus, we determine that Factors 4 and 5 do not weigh in favor of exercising our discretion to deny institution. Regarding Factor 6, Patent Owner argues that “[t]he Board should not expend its finite resources to endorse Petitioner’s second bite at the apple.” Prelim. Resp. 14. Nevertheless, because the earlier proceeding was terminated at Petitioner’s request, the Board has not previously considered the merits of Petitioner’s unpatentability contentions, and the Board’s involvement in the parties’ disputes related to the ’593 patent has been minimal up to this juncture. In the absence of meaningful efficiency concerns, we find that Factor 6 does not weigh in favor of exercising our discretion to deny institution. For Factor 7, we know of no reason why we could not meet the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination within one year of institution, so we also find that this factor does not weigh in favor of exercising discretion to deny institution. After considering Petitioner’s and Patent Owner’s arguments, we conclude that the General Plastic factors weigh against exercising our discretion to deny review.” slip op. at 61
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,330,593 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00459 · APJ James P Calve · IPR · Final written decision
Claims 1–7 and 10–31 are unpatentable under §103 over the asserted combinations involving Chandra or Keohane.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” PO Resp. 3. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent, but our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“claims 1, 15, 21, and 27 recite methods in which a first network security appliance of a CSF receives network traffic to inspect, determines whether the traffic was transmitted from a second network security appliance that executed security operations on the traffic, determines network security operations for the first network security appliance to execute based on any security operations executed by the second network security appliance, and executes operations on the traffic. Ex. 1001, 10:58–11:17, 12:31–60, 13:20– 47, 14:13–37. As claimed, network traffic may travel in one direction from a second network security appliance to a first network security appliance. The ’825 patent describes unidirectional traffic as “one embodiment” of the CSF. A first network security appliance receives incoming network traffic and determines if the incoming network traffic is transmitted from a second network security appliance based on the source address of the traffic and determines operations that the second network security appliance executed. Ex. 1001, 2:48–56. In this embodiment, traffic travels in a single incoming direction between network security appliances. Tr. 30:22–31:18. The ’825 patent also describes the “cooperation” in a CSF as “[t]he network packet carrying the flag is transmitted to another member node at the next hop.” Ex. 1001, 6:28–34 (emphasis added); id. at 8:3–8. Traffic always flows from one hop to a next hop along the same path between root 220 at the edge of the network and each particular endpoint (leaf) shown in Figure 2 below. Traffic does not flow along different interconnected paths when it travels from root 220 to an endpoint leaf 240a–240d, 250 as Patent Owner asserts is required of a CSF. PO Resp. 13–15. Figure 2 is “an exemplary topology of a cooperative security fabric (CSF)” with Patent Owner’s annotation of network traffic paths. Ex. 1001, 2:29–31; PO Resp. 16. Traffic travels along a single path from root 220 to branch 230a to leaf 240a to the blue end node. Traffic travels along a single path from root 220 to leaf 250 to the red end node. Traffic from the green node travels along a single path to leaf 240d to branch 230b to root 220. Network security appliances only cooperate along a single red, green,” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“(3) Analysis We agree with Petitioner that “the claims only require two appliances and traffic to go from one appliance to the other.” Reply 11. Nothing in the claims or element 1[a] requires network traffic to originate from outside the private network or the CSF. Dr. Black testifies that the background of the ’825 patent describes a need for a CSF to coordinate operations performed on network traffic that is “transmitted to/from the network” to avoid or reduce redundant operations among members of the CSF” (Ex. 2004 ¶¶ 44, 50), but Dr. Black describes the claimed network fabric and CSF entirely in the context of controlling network traffic transmitted within the enterprise network topology 200 as illustrated in Figure 2 of the ’825 patent (id. ¶ 52), which we discussed in Section II.B.1. supra and reproduce again below. In Figure 2, Patent Owner annotates paths taken by network traffic within network topology 200 comprising root 220, branches 230a, 230b, and leaves 240a–d, 250 within network 200. PO Resp. 16–17; Ex. 2004 ¶ 52. In addition, Chandra’s network 102 is “a collection of individual networks, interconnected with each other and functioning as a single large network.”7 Ex. 1004 ¶ 21. Network 102 can include LANs, WANs, and/or MANs. Id. As a result, network devices 104 located in different networks of network 102 transmit to one another via edge network links 218 within this internetwork of networks 102. Id. ¶¶ 8, 9, 21–30, Figs. 1, 2; Pet. 22–26. Transmitting and receiving CEs 208, 214 are security-based devices at the edges of different networks in network 102 to control incoming network traffic sent between transmitting and receiving network devices 206, 212 located in different networks. Ex. 1004 ¶ 30. A plurality of CEs can be associated with a single PE to receive incoming network traffic from a transmitting CE. Ex. 1004 ¶ 28. Thus, network traffic is transmitted from network devices 104 connected to a plurality of CEs that connect to other CEs via edge network link 218 and to other network devices 104 connected to those CEs “along multiple interconnected paths” (see id. ¶¶ 28–30) that satisfies Patent Owner’s definition of CSF (PO Resp. 13). The sending and receiving CEs “constitute multiple cooperating network security appliances” contrary to Patent Owner’s arguments (PO Resp. 38), as do CEs 208, 214.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Buruganahalli’s topology of devices 50, 52, 54 coordinates security operations that they perform on network data 58 sent from network device 54 to network device 52 to network device 50 from one hop to the next hop. Ex. 1005 ¶¶ 30–32, 34–36, 38–40, 46–48, Fig. 3. We agree with Petitioner that it would have been obvious to update Chandra’s metadata tag for a multi-CE path to indicate actions taken, as Buruganahalli teaches, to reduce latency and resource waste. Pet. 53–54 (citing Ex. 1002 ¶¶ 122, 125 (citing Ex. 1004 ¶ 28)). Dr. Franz testifies it would have been obvious to arrange Chandra’s different network security appliance CEs in series so that traffic passed through multiple CEs that performed different security functions in a CSF before reaching a receiving PE, as Chandra and Buruganahalli teach or suggest. Ex. 1019 ¶ 60 (citing Ex. 1004 ¶¶ 28, 30; Ex. 1002 ¶¶ 122, 125). Patent Owner’s argument that the CEs are not in series does not address Petitioner’s contention that it would have been obvious to place them in series, as Buruganahalli discloses, to perform different security operations on network traffic. Pet. 54; Ex. 1019 ¶ 60; Cf. Sur-reply 20–21. Petitioner contends that Chandra’s system also transmits data packets with updated labels to devices in an extended virtual private network (VPN) shown in Figure 8. Pet. 54. Petitioner asserts it was well known to connect a private network of a remote company site to another network such as an enterprise network using a VPN tunnel, and it would have been obvious to attach the VPN in Figure 8 to a private network as an extension of Figure 2’s private network. Pet. 54–56. Petitioner contends that, in such instances, a receiving CE would transmit data packets with the updated label to a receiving device in an extended network using the transmitting and receiving end configurations shown in Figures 2 and 8 of Chandra. Id. at 54. We agree with Petitioner that a skilled artisan would have been motivated to connect Chandra’s Figure 2 private network to Chandra’s Figure 8 VPN network to extend enterprise network communications so the next device in the extended VPN network would be “a next network appliance participating in the CSF” as claimed. Pet. 54–56; Reply 26–27 (citing Ex. 1019 ¶ 61). We also agree with Dr. Franz who testifies: Contrary to the PO’s assertion that “Petitioner…provides no rationale for why a POSITA would modify Chandra by combining Figures 2 and 8, or explain why a POSITA would reasonably expect it to succeed (POR, 45),” I provided ample reasons why a POSITA would have found it obvious that the VPN in Chandra’s Figure 8 could be attached as an extension to the private network in Chandra’s Figure 2 as illustrated below. In fact, I provided an example of a widely circulated official publication by the U.S. National Security Agency containing a reference architecture that recommended cascading multiple VPN solutions for added security. (Franz. Decl. ¶126-130.) Ex. 1019 ¶ 62 (citing Ex. 1002 ¶¶ 126–130).” slip op. at 30
Patent outcomesUS 10,084,825 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,084,825 - Bright Data Ltd. v. Oxylabs, UabNo claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–5 were not proven unpatentable: Athas does not show the same packets are received, modified, and forwarded; neither obviousness combination teaches execution in response to the client’s execution of the second script.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). For our Institution Decision, we adopted Petitioner’s formulation. Institution Dec. 11. Patent Owner has not provided a description of the ordinarily skilled artisan. However, Dr. Almeroth testifies that although he “do[es] not necessarily agree with every aspect of Dr. Williams’s explanation,” he bases his opinions on Dr. Williams’s description of the person of ordinary skill in the art. Almeroth Decl. ¶ 36. For this Final Written Decision, therefore, we adopt the description of the person of ordinary skill articulated by Petitioner 6 Neither party has presented evidence or arguments regarding objective evidence of non-obviousness. and used previously in our Institution Decision. We find that this formulation is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“as “the number of packets” intercepted in limitation 1a (see PO Resp. 6–7). Petitioner responds that resolving this argument is not necessary. Pet. Reply 1. We find that whether claim 1 requires the packets intercepted by the network appliance in limitation 1a to be the same packets involved in limitations 1b–1d, Petitioner has not persuasively shown that any same number of packets in Athas that are received at proxy platform 101 are then modified and forwarded as required by limitations 1b–1d, for the reasons discussed below. We agree with Patent Owner that the number of packets in limitations 1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23
- BurdenNot shown unpatentable
“1b-1d are the same, and, therefore, we find that Petitioner’s citations to Athas do not disclose the sequence of operations recited in claim limitations 1b–1d. Petitioner, therefore, does not demonstrate that Athas anticipates the claim. Specifically, we are not persuaded either by Petitioner’s assertions or Dr. Williams’s testimony that in Athas, the same “number of packets” that are received and modified by Athas’s proxy platform 101 are then forwarded to Athas’s proxy client 107, as required by limitations 1b–1d. PO Resp. 6– 7; 15–20; Almeroth Decl. ¶¶ 76–77. Petitioner does not persuasively address this issue the Petition or in its Reply (see Pet. Reply 2–11, asserting, in a footnote, only that “Patent Owner mischaracterizes Dr. Williams’s testimony regarding same versus different packets,” and that “Dr. Williams’s testimony does not support Patent Owner’s arguments.”). Id. at 11 n.4 (citing Ex. 2011, 115:22–117:20, 118:5–12). The citations to Dr. Williams’s testimony do not help Petitioner meet its burden of showing that the “same packets” feature is met by a preponderance of the evidence. Pet. Reply 11. The testimony of Dr. Williams cited by Petitioner relates to whether a hypothetical request for a web page forwarded from a conventional proxy to a server would use the same packets as the original request from a client to the proxy. See Ex. 2011, 115:7–21. The testimony does not address the issue raised by limitations 1b–1d, which is whether Athas discloses using the same packets for the receiving, modifying, and forwarding operations performed by the network appliance. In any event, we find Dr. Williams’s testimony on this issue to be equivocal and unconvincing. Several times he avoids answering questions by stating “it depends on how the software is written” or “it depends on the details of the code.” See id. at 117:8–17; 118:10–12. There is, therefore, no persuasive evidence of record demonstrating that Athas discloses that the same “number of packets” received at proxy platform 101 are, in a modified form, forwarded to proxy client 107. For example, there is no support in the record for a finding that once the content of packets sent from service platform 109 to proxy platform 101 in Athas is extracted and manipulated to replace non-MWL scripts with MWL scripts and the DOM is generated, modified versions of the same received packets are forwarded to provide the web page to proxy client 107, as opposed to completely new packets. We find no sufficient support for this contention in Dr. Williams’s testimony:” slip op. at 23
Patent outcomesUS 8,924,457 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 8,924,457 - Google LLC v. Security First Innovations, LLCInstitution deniedPTAB · Jun 6, 2024 · IPR2024-00213 · APJ Daniel Kazhdan · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–10 were obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review, see 35 U.S.C. § 314, and she delegated that authority to the Board. See 37 C.F.R. § 42.4(a). The Board may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We determine that the Petition in this case does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use. A higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶ 40). The Preliminary Response does not provide a description of the person of ordinary skill in the art or dispute Petitioner’s description. Patent Owner’s expert “accept[ed] Dr. Bhattacharjee’s proposed qualifications of a [skilled artisan]” for purposes of his declaration. Ex. 2003 ¶ 20. For purposes of assessing institution, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding. C. Claim construction slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“The Preliminary Response argues that limitations [1A] and [1B-2] “require storing two or more shares generated from a dataset on two or more physical storage devices.” Prelim. Resp. 5. This, purportedly, is “a central feature” of the invention. Id.; see generally id. at 4–7. The relevant limitations recite: “[1A] a plurality of physical storage devices storing thereon a plurality of shares, the plurality of shares being associated with at least one session key used to secure a dataset” and a secure storage system configured to “[1B-2] generate the plurality of shares for storage on the plurality of physical storage devices by performing a securing operation on the dataset received from the client device and distributing the dataset in the shares.” See Ex. 1001 98:3–6, 98:12–15. As the Preliminary Response notes, the Federal Circuit has repeatedly held that “‘a plurality of’ means ‘at least two of.’” SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir. 2021) (citing cases); Prelim. Resp. 5. As the Preliminary Response further notes, the Petition itself seems to interpret the claims as requiring storage on at least two physical storage devices. Prelim. Resp. 7. Specifically, the Petition argues that “Dickinson-Takeda . . . stores encryption results . . . on at least two of storage devices D1-D4.” Id. (quoting Pet. 68); see Ex. 2003 ¶ 19. Implicit in this is the need for at least two separate physical storage devices. Thus, we conclude that the claims require storing the shares among two or more physical storage devices.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“this decision we construe limitations [1A] and [1B-2] together to require storing two shares among at least two physical storage devices. Petitioner never addresses this requirement, and we find this to be a fatal flaw. According to Petitioner, Takeda teaches limitations [1A] and [1B-2] as follows: “Takeda’s technique involves dividing plaintext – which is any non-encrypted (i.e., unciphered) information – into blocks, ciphering different blocks using different ‘ciphering attributes’ (e.g., ciphering keys and/or ciphering algorithms), and outputting the ciphered blocks with the ciphering attributes.” Pet. 10; see generally id. at 10–16, 28–31, 39–40. Patent Owner responds that “Takeda’s blocks are stored together in a single storage device,” and this does not disclose or suggest storing the shares on at least two physical storage devices. Prelim. Resp. 8; see id. at 8–9 (citing Ex. 2003 ¶¶ 51–53). We agree with Patent Owner. Petitioner has not shown a reasonable likelihood that Takeda discloses or suggests storing data on physically separable storage devices. The Petition points to Takeda’s teaching that the data is “divided into blocks.” Pet. 11. As Patent Owner notes, Takeda teaches that these blocks are all stored on a single, physical device. Prelim. Resp. 8. Specifically, Takeda teaches that “[t]he ciphertext is stored in the removable recording medium 39 or the storage device 37.” Ex. 1008 ¶ 92.5 We determine that Takeda does not teach or suggest storing this data in at least two separate media, at least two separate storage devices, or at least one of each. Correspondingly, Takeda’s Figures show data blocks next to each other—i.e., on one physical device. See id. at Figs. 1–4. The Petition does not suggest that Ophir teaches storing shares among different physical storage devices. As the Petition itself notes, Ophir seems to use a single “mediator [to] provide[] secure virtual storage to data clients.” Pet. 9 (quoting Ex. 1007 Abstract) (emphasis omitted).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,338,140 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,020,667 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 2, 2024 · IPR2023-01441 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny institution of inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“persuasive. As both parties note, the phrase in question recites “creating” a second data miner, which requires the generation of a new data miner. Petitioner’s declarant testifies that during prosecution of the ’526 patent prior art references were “expressly distinguished” because the prior art merely “pick[ed] a pre-existing search engine” or fell short because “no new miners [were] created.” Ex. 1008 ¶ 49 (citing Ex. 1002, 83, 34); accord Ex. 2001 ¶ 57 (similar testimony from Patent Owner’s declarant). We agree with the parties that this phrase requires the generation of a new data miner. Patent Owner argues that Petitioner’s construction falls short because it does not properly address the requirement that the second data miner be created “in response to the customer request.” Patent Owner states, and we agree, that “provid[ing] customized results to the user based on the customized parameters of the user search request” does not address the requirement that the second data miner be created “in response to” a customer request. Prelim. Resp. 9. In support of Patent Owner’s assertions, Patent Owner’s declarant points out that “as described with reference to FIG. 2 of the ’526 Patent, ‘customer requests for information can be received’ at block 66 and then at block 68, [‘]additional low level miners can be written in response, or high level miners, if required and not yet written, can be created.’” Ex. 2001 ¶ 61 (citing Ex. 1001, 8:32–35) (emphasis added). As stated in the ’526 patent a “‘miner’ or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66. The ’526 patent further notes that “the data miners are modular components that have specific input and output specifications.” Id. at 6:25–26. Further, “[m]iners are specified in terms of the data, usually as indicated by the below-described keys, that must be available when they start, and the data (including other keys) that they will create during successful processing.” Id. at 6:36–40. Thus, our review of the intrinsic record persuades us that creation of a second data miner requires the creation of a new “analysis engine,” and not just the provision of customized parameters to an existing “analysis engine.” Therefore, for the purposes of this decision, we construe the phrase “creating at least a second data miner in response to the customer request for information,” to require (1) the creation of at least one new second data miner, (2) that this creation be done in response to a customer request.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“As to the first argument, we agree with Patent Owner that Petitioner has not shown sufficiently that Jacobsen’s site ranking is created in response to a user request. Jacobsen’s site ranking feature “analyzes the Internet (i.e., the sites found) to determine the degree to which sites have been found interesting by others in the desired context/profession.” Ex. 1003 ¶ 67. A word score is saved for each word on each page (i.e., except for stop words, as discussed above). When a user enters a query, the inventive SSSE determines a set of (relevant) pages that contain the query terms. For each page, the word scores are summed for the words of the query to compute a site ranking for that page. The site rankings for the pages are then used in determining how to display the search results to the user. Id. ¶ 69. Based on our review of Jacobsen’s disclosures, we are persuaded that the query is an input to the site ranking feature. As described in the ’526 specification, a “‘miner’' or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66 (emphasis added). Site ranking in Jacobsen is performed after a user query, but on the record before us, Petitioner has not shown that the analysis engine used to rank the sites is not created “in response to” the user query. See also Pet. 14 n. 7 (stating that Jacobsen discloses “the use of a pre-existing template to search the results of a first data miner”). In addition, Petitioner has not shown sufficiently that the site ranking feature in Jacobsen would disclose a data miner as recited in the claims. The ’526 patent describes prior art systems that “generat[ed] an inverted index of words that occur on Web pages.” Ex. 1001, 1:22–23. User queries were provided with output based on that index and the results “returned are usually ranked by relevance using e.g., link information or key word frequency of occurrence.” Id. at 1:29–31. Petitioner’s declarant describes these disclosures are applicant admitted prior art. Ex. 1008 ¶ 52. The ’526 patent criticizes this prior method as inefficient because, despite the ranking “finding particular types of information typically entails a great deal of mundane sifting through query results by a person” and this process is “labor-intensive and mundane,” ranking “can consume an excessive’ amount of time.” Ex. 1001, 1:31–35, 1:42–43, 2:5–6. In contrast, the ’526 patent’s system purportedly “integrates the knowledge of many experts to sift through a large corpus of data to respond to what might be relatively complex requests for information.” Id. at 3:9–11. Its data miners are analysis engines that operate based on expert rules. Id. at code (57), 5:63– 66. Petitioner’s allegations have not persuaded us that Jacobsen’s site ranking feature overcomes the problems of the prior art ranking system. Accordingly, based on the record before us, we determine that” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success
“E. Alleged Obviousness of Claims 2 and 35 Over Jacobsen, and Over Jacobsen and Jaramillo, and Alleged Obviousness of Claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 Over Jacobsen and Hegli Petitioner asserts that dependent claims 2 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen, and as obvious over Jacobsen and Jaramillo. Pet. 4, 32–38. Petitioner also asserts that dependent claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen and Hegli. Pet. 4, 38–50. Petitioner’s assertions here rely on the same disclosures from Jacobsen regarding the above discussed independent claims and do not remedy the above noted deficiency. As such, on the record before us, we are not persuaded by Petitioner’s Jacobsen-based challenges to claims 2, 6–9, 11, 16, 17, 35, 39–42, 44, 49, and 50. F. Alleged Anticipation of Claims 1, 6, 9, 11, 13, 19, 20, 34, 39, 42, 44, 46,” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,010,526 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953 - Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentablePTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision
Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37
Patent outcomesUS 8,244,582 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,244,582 - PTAB · Feb 13, 2024 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted obviousness grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response. Paper 9. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Other 314aNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted, Patent Owner has expressly waived filing a preliminary response. Paper 9. At this stage, therefore, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-00970 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1, 5, 25, 26, 30, and 50 because the Fintiv factors favored discretionary denial and the Petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“provided compelling evidence to support its contention that Bossemeyer, alone or in combination with Merenda, teaches “permitting full or partial reconstruction of said data with corresponding extracted data and remainder data after accessing said respective extract stores” recited in claims 1 and 29.5 5 In view of this determination, we do not need to address Patent Owner’s additional argument that Bossemeyer is not analogous art to the ’482 patent. Prelim. Resp. 16–24. Similarly, we do not need to address Patent Owner’s additional argument that a person of ordinary skill would not have found it obvious to combine Merenda with Bossemeyer. Prelim. Resp. 50–61.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,552,482
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.