• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01444 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 are unpatentable under the stated § 103 combinations.

  RulingsFinal written decision

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

    “The parties’ arguments require us to consider whether a printer is commensurate with the broadest reasonable interpretation of “thin terminal.” See Pet. 30–31; PO Resp. 42–43; Pet. Reply 18–20. The ’033 patent describes “thin terminals” as having “a relatively low power central processor and operating system” and as being “mainly used as peripherals to an Application server in a PAN.” Ex. 1001, 5:2–5. The main tasks of a thin terminal are described as “user interaction, rendering output for a user and providing an Application server with a user’s input.” Id. at 5:5–7. Examples of thin terminals provided in the ’033 patent include a watch and a messaging terminal. Id. at 5:5–7. Furthermore, the ’033 patent contrasts thin terminals with smart terminals having “a relatively powerful central processor, operating system and applications,” such as “a computer notebook and PDA.” Id. at 4:62–5:2. In describing a messaging terminal in one embodiment, the ’033 patent states that the terminal “has no embedded application code or data.” Id. at 10:18–21. Petitioner contends a printer is a thin terminal because, at least, a printer “has a low power central processor and operating system relative to a laptop computer or PDA.” Pet. 31 (citing Ex. 1003 ¶ 25) (internal quotation omitted). We agree with Petitioner, and we additionally observe that a printer is a peripheral utilized for rendering user output, which is consistent with the Specification’s description of a thin terminal. We also agree with Petitioner that the Specification’s reference to “no embedded application code or data” (Ex. 1001, 10:18–21) does not preclude a printer with application code and/or data from being a thin terminal, because the ’033 patent also describes the thin terminal locating, downloading, and executing software. Pet. 19 (citing Ex. 1001, 10:13–25). As such, we determine the “thin terminal” recited in claims 7 and 46 encompasses a printer.1” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art would have had a Master[] of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with a concentration in communication and networking systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical or computer engineering and having two or more years of experience in communication and networking systems. Pet. 7–8. Petitioner’s contention is supported by the testimony of Dr. Kiaei, who bases his testimony on his “experience working in industry and academia, with undergraduate and postgraduate students, with colleagues from academia, and with engineers practicing in industry.” Ex. 1003 ¶¶ 15– 16. IXI does not dispute Petitioner’s definition of the level of ordinary skill in the art, and, in fact, IXI applies it in IXI’s Patent Owner Response. PO Resp. 8; see also Ex. 2301 ¶ 16 (IXI’s declarant, Dr. Mandayam, applying same definition). Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision. We further observe that Petitioner’s proposed definition comports with the qualifications a person would need to understand and implement the teachings of the ’033 patent and the prior art of record.” slip op. at 9

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “3. Marchand Marchand is a published international patent application, and Petitioner asserts Marchand’s priority date under 35 U.S.C. § 102(e) is April 3, 2000, the date of filing for a prior national application (i.e., Marchand Priority) in the United States. See Pet. 4–5. IXI does not contest Petitioner’s priority date assertion. Therefore, for purposes of this decision, we find Marchand qualifies as prior art to the ’033 patent under 35 U.S.C. § 102(e) because April 3, 2000, predates the May 7, 2001, filing date of the ’033 patent.” slip op. at 10

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

    “ordinarily skilled artisan “would have modified Marchand’s system such that the public IP address of the mobile phone gateway 33 was provided by the cellular network 35.” PO Resp. 40 (quoting Pet. 17–18). IXI argues that Marchand and Vilander do not indicate a need for the cellular network to provide a public IP address for the gateway mobile phone. Id. (citing Ex. 2301 ¶ 70). Nevertheless, we agree with Petitioner that “using Vilander’s address allocation in Marchand would have amounted to nothing more than the use of a known technique to improve similar devices in the same way or the combination of prior art elements according to known methods to yield predictable results.” Pet. Reply 15 (citing, inter alia, KSR v. Teleflex, 550 U.S. 398, 417 (2007)); see also Pet. 19 (citing same). Although Marchand describes gateway mobile phone as having “a public IP address recognized in the wireless IP network,” Marchand does not explicitly describe how the public IP address is assigned. Pet. Reply 16 (quoting Ex. 1005, 4:23–30). In light of this, Petitioner identifies evidence that Vilander’s GGSN would have improved Marchand by allocating the public IP address to Marchand’s gateway mobile phone 33. Pet. 18 (citing Ex. 1003 ¶ 46; Ex. 1011, 1:48–52, 1:57–59).” slip op. at 22

  Patent outcomesUS 7,039,033 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,039,033
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ixi IP, LLCAll claims unpatentable
  PTAB · Dec 21, 2016 · IPR2015-01445 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 5–7, 9, 13–17, 19, 21–23, 27, 28, and 30 are unpatentable as obvious over Liu alone and Liu with Chiloyan; anticipation by Liu was not shown.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “systems. Pet. 7. In its Response, Patent Owner states it applies Petitioner’s definition of a person of ordinary skill on in the art. PO Resp. 9. Based on our review of the ’648 patent, the types of problems and solutions described in the ’648 patent and cited prior art, we adopt, for purposes of this Decision, Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. We note that the applied prior art also reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6

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

    “Petitioner submits that “all terms of the ’648 Patent should be given their broadest reasonable plain meaning.” Pet. 4. Patent Owner submits that “the terms of the challenged claims should be interpreted according to their plain and ordinary meaning.” PO Resp. 9. Just as in the Decision on Institution, we apply the broadest reasonable interpretation standard here. In our Decision on Institution, we stated that “we do not explicitly construe any claim terms.” Dec. 5. We similarly see no reason to construe explicitly any claim term at this stage in this proceeding. B. Anticipation Analysis” slip op. at 6

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

    “identifier includes manufacturer information, as required by the independent claims. Patent Owner correctly notes that there is no explicit disclosure in Liu of manufacturer information present in the device information. PO Resp. 21–22. Petitioner has not directed us to a disclosure in Liu that expressly states that manufacturer information is present in the device information. We are unpersuaded by Dr. Kiaei’s testimony, which is couched in terms of what Dr. Kiaei opines “must be” in Liu, rather than what Liu expressly discloses. Ex. 1003 ¶ 39. Dr. Kiaei’s testimony discusses portions of Liu regarding manufacturer 1670 and its registration of device identifiers for toys, but these citations to Liu do not expressly disclose the disputed claim limitation. Id. ¶¶ 37–39. Dr. Kiaei provides no additional authority for the statements supporting the assertions in paragraphs 37–39, in particular, the statement that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used within the system [to] be uniquely recognized.’” Pet. 15 (citing Ex. 1003 ¶ 39); see also 37 C.F.R. § 42.65(a) (stating opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”). We also find unpersuasive the argument that “each identifier must be associated in some way to the particular manufacturer of the toy to allow ‘each toy to be used with the system [to] be uniquely recognized.’” Ex. 1003 ¶ 39. Liu states that, via registration of a device identification number for the toy, “each toy to be used in the system may be uniquely recognized.” Ex. 1005, 46:5–7. If, as hypothesized by Dr. Kiaei, two manufacturers registered the same toy identifier for two different toys, then by its terms, the toy would not be uniquely recognized, as required by Liu. Id. Petitioner also has not carried its burden to establish that Liu inherently discloses that the device information includes a manufacturer of the device. “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.’” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Inherency is not “established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. (quotation omitted).” slip op. at 11

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

    “We agree with Petitioner that there remains ambiguity about the field of endeavor Patent Owner seeks to identify with respect to the ’648 patent. Reply 20. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). Petitioner characterizes the field of endeavor of both disclosures as “techniques for network communication between devices and servers,” which, while broad, is not unreasonable. Reply 22. Although Liu’s most noticeable feature may be a teddy bear, the underlying networking and functionality of its system place it in the same field of endeavor as the ’648 patent. See id. at 20–21 (including citations to Liu’s disclosures of aspects of network interactions between toy devices and servers). Limiting Liu’s field of endeavor to “toys” is insupportably narrowing when Liu in fact discloses networking features that in numerous instances align with the disclosure of the ’648 patent. Regarding the particular problem to be solved, our position remains the same as in the Decision on Institution. Liu’s disclosure is, at least, reasonably pertinent to the problem faced by the inventors of the ’648 patent, i.e., “the problem of ‘sending software to a device connected to a local network from a remote server.’” Dec. 14. Thus, we remain persuaded that Petitioner has established sufficiently that Liu is analogous art.” slip op. at 17

  Patent outcomesUS 7,016,648 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,016,648
• 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
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

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

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

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

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873
• HTC Corporation / ZTE (USA) et al. v. Cellular Communications Equipment LLCNo claims unpatentable
  PTAB · Jan 4, 2016 · IPR2014-01135 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 3–9 were not shown unpatentable because neither Sasuta nor Lawrence disclosed the home network preference limitation explicitly or inherently.

  RulingsFinal written decision

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

    “Whether a party is a real party in interest is a “highly fact-dependent question” that is evaluated “on a case-by-case basis.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Some of the common considerations for determining whether a party is a real party in interest include whether the party funds, directs, or controls the petition or proceeding. Id. at 48,760. Here, Patent Owner does not identify any evidence indicating that HTC America funds, directs, controls, or otherwise is involved in this petition or proceeding. Patent Owner’s argument that HTC America and HTC Corporation acted jointly in other cases and that HTC America is named as a real party in interest in other cases does not indicate that HTC America is a real party in interest in this case. Similarly, Patent Owner’s argument that HTC America and HTC Corporation share counsel does not indicate that HTC America funds, directs, controls, or otherwise is involved in this case. The only evidence specifically related to this proceeding is that an employee of HTC America is identified on the power of attorney for HTC Corporation. PO Resp. 12–18; see also, Ex. 2022, 24:20–25:6 (Transcript of conference call with the Board: counsel for Patent Owner “So if we want to talk about evidence specific to these cases, it’s this power of attorney in the 1135 case.”). We are not persuaded that this evidence, by itself, is sufficient to indicate that HTC America is a real party in interest in this case. There is no dispute that the actual signature on the power of attorney is from an employee of HTC Corporation. See PO Resp. 14; Paper 33 (“Reply”) 23. And Petitioner represents that the reference to an HTC America employee on the document was a simple oversight. Reply 23. Patent Owner does not provide evidence to the contrary.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “preamble “is not limiting where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation marks omitted). Id. A preamble, however, “limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” For example, “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope because it indicates a reliance on both the preamble and claim body to define the claimed invention.” Id. Both parties agree that, although it is part of the preamble, the term “home network” acts as a limitation of claim 1. PO Resp. 25; Paper 42 (“Tr.”), 5–6 (Petitioner’s counsel: “We think that home network is limiting.”), 12–13 (Petitioner’s counsel: “Since the preamble, we agreed, is limiting . . .”). We agree that the preamble limits the scope of the challenged claims. The body of claim 1 refers to “said first network,” which refers to the “first . . . mobile telephone network[]” recited in the preamble. The preamble further defines “said first network is the home network of the mobile communication device.” We are persuaded that this language “indicates a reliance on both the preamble and claim body to define the claimed invention” and is not merely a statement of intended purpose or intended use. Catalina Marketing, 289 F.3d at 808 (citing Bell Comm’s Research, Inc. v. Vitalink Comm’s Corp., 55 F.3d 615, 620 (Fed. Cir. 1995)).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “Patent Owner proposes a broadest reasonable interpretation of “home network”—“the network that the mobile communication device is preconfigured to access first.” PO Resp. 25. According to Patent Owner, several examples described in the ’804 patent, including those illustrated by Figures 3, 4a, and 4b, support this interpretation by showing a mobile station that is “preconfigured to access [the] home network first.” Id. at 25–27 (citing Ex. 1001, Figs. 3, 4a, 4b, 3:22–29, 3:61–65). Petitioner proposes a competing interpretation for the term—“the network to which the mobile stations subscribe.” Reply 3. Petitioner argues that there is “a clear and unambiguous definition” of the term in the specification. Id. (quoting Ex. 1001, 1:41–42 (“the ‘home’ network (i.e. the network to which the mobile stations subscribe”)). We agree with Petitioner that the broadest reasonable interpretation of “home network” is “the network to which a mobile station subscribes,” as explicitly defined in the specification. Ex. 1001, 1:40–47. Nothing in the ’804 patent indicates that the patentee intended to modify this definition. In particular, the word “preconfigure” in Patent Owner’s proposed construction is never recited in the ’804 patent. We, therefore, are not persuaded that limiting the term “home network” in such a way is proper.” slip op. at 11

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

    “Nothing in Sasuta’s description requires that in choosing a service provider from the catalog of service providers, a provider must be chosen in any particular order. In fact, Sasuta is silent on whether any particular network, such as a home network, has priority and should be chosen first. The Petition relies, primarily, on Figures 3 and 4, and the corresponding descriptions, for support of anticipation by Sasuta. Pet. 31–32, 49 (citing Ex. 1010, 3:44–4:8, 6:1–10). These portions of Sasuta, however, do not describe a home network or any other type of network that is selected first among those networks listed in the catalog. To the contrary, the language corresponding with Figure 3 describes communication unit 1001 choosing service provider 103 for its telephone interconnect service, without any explanation, despite the fact that service provider 101 also includes that service. The language corresponding with Figure 4, similarly, does not shed any light on whether there is a home network that is always chosen first from the catalog of service providers. The only language relating to how a network is chosen in this portion of Sasuta states that “the communication unit uses this service characteristic information by comparing them against corresponding threshold values for these characteristics . . . [i]n this manner, the communication unit can determine whether a particular service provider should be considered for providing a particular service.” Ex. 1010, 5:5–14. Thus, Sasuta does not disclose explicitly the home network preference limitation. Petitioner also has not met its burden to show that the home network preference limitation is disclosed inherently by Sasuta. “To serve as anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Petitioner acknowledges that its inherency argument was not made until, at the earliest, the Reply brief, and that it did not proffer evidence on the issue. Tr. 14:16–18 (“JUDGE WEINSCHENK: What evidence have you provided us that shows us that [the home network preference limitation is] so well-known that we don’t need it in the reference? MR. THILL: In terms of the record, I don’t know that we made an explicit argument, and that was not part of the testimony of our expert.”); see also Reply 3–4 (asserting that “[a]bsent a [home network] cellular telephone is inoperable” and that it “is inherent in the definition of a working cellular telephone” to have a home network, but providing no citations to supporting evidence for these assertions).” slip op. at 15

  Patent outcomesUS 6,377,804 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 6,377,804
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.

  RulingsFinal written decision

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

    “term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,536,856 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,536,856
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.

  RulingsFinal written decision

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

    “proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6

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

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,482,274 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,482,274

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.