• Cisco Systems, Inc. v. Portsmouth Network Corp.Institution denied
  PTAB · Dec 13, 2024 · IPR2024-00954 · APJ Stacey G White · IPR · Institution

  The Board denied institution on claims 1–25 because Mitchell did not teach or render obvious the required failure propagation to each node and deactivation causing loss of connectivity.

  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 Petitioner’s request to institute inter partes review.” slip op. at 2

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

    “the parties’ arguments, we understand Mitchell to teach the propagation of failure information from the location of the failure to the network’s edge or endpoints and that this propagation excludes nodes between the detected failure and the network’s core. Therefore, the question before us is whether one of ordinary skill in the art would have learned of the recited propagation and receipt to and from “each node of the other nodes of the plurality of network nodes traversed by the first set of links”8 from Mitchell’s downstream propagation of failure information. We are not persuaded that Petitioner’s showing is sufficient. Petitioner relies upon a circumstance where the failure occurs far upstream and uses that case to assert that Mitchell teaches the recited propagation and receipt. Claims 1 and 16, however, respectively recite the propagation to “each node” and “all nodes.” Mitchell, in contrast, does not teach propagation to each node, but rather it teaches continuing down the path to message only the remaining nodes in the path between the failure and the endpoints. It specifically and explicitly sets out to maintain connectivity with all nodes upstream of the failure. This is materially different from the claims of the ’637 patent, and Petitioner has not provided a sufficient explanation to establish that one of ordinary skill in the art would have found it obvious to extend Mitchell’s downstream-only propagation to instead” slip op. at 19

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

    “and 16. See Prelim. Resp. 7–10. For example, claim 1 additionally recites, in relevant part, “deactivating a physical layer of the first set of links connected thereto, thereby causing a loss of connectivity in the first set of links.” Ex. 1001, 11:37–39 (limitation [1h]). Claim 16 similarly recites, in relevant part, “to deactivate the physical layer resources of each node to links in the first set of links connected to that node upon receiving the second message, to cause a loss of connectivity in the first set of links.” Id. at 12:54–58 (limitation [16g]). Thus, claims 1 and 16 both require deactivating the physical layer of nodes in order to cause a loss of connectivity in the first set of links. Petitioner asserts that Mitchell teaches that “the physical layer of the links connected downstream of these network elements are deactivated, which causes a loss of connectivity in the ‘group of links.’” Pet. 26 (emphasis omitted); see also id. at 36 (making same argument for claim 16). We are not persuaded that downstream deactivation teaches the deactivation of “each node” nor does it teach the “loss of connectivity in the first set of links.” This is true because Mitchell teaches the preservation of connectivity in upstream links. Petitioner does not argue that one of ordinary skill would have understood Mitchell to teach deactivation of the set of links, but rather Petitioner argues that there could be a circumstance where Mitchell may be unable to preserve connectivity because the failure happened at the most upstream location. This is not sufficient to teach a system that deactivates all nodes in the set of links in order to cause a loss of connectivity in the set of links because Mitchell sets out to maintain some degree of connectivity. We agree with Patent Owner that the disclosures of Mitchell would not have taught one of ordinary skill in the art the recited propagation and receipt of failure information to and by each of the nodes in the network nor would it have taught the recited deactivation to cause a loss of connectivity in the set of links. As such, Petitioner has not met its burden to demonstrate that Mitchell would have rendered independent claims 1 or 16 obvious. As to dependent claims 2–15 and 17–25, Petitioner makes no further allegations that would remedy the deficiency discussed above in regards to the independent claims. As such, Petitioner has not met its burden to show that any of claims 1–25 would have been obvious over the asserted art.” slip op. at 20

  § 103 obviousnesscites Phillips
  Patents in suitUS 8,199,637
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7

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

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01026 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claims 5–8 and 16–19 on all petition grounds, finding a reasonable likelihood of success on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’304 patent. Accordingly, we institute an inter partes review of claims 5–8 and 16–19 of the ’304 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 5[a] receiving, at a second conditional access client of the second conditional access server, an authentication through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses the second root of trust for the second security domain which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579” slip op. at 7

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

    “Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’304 patent.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,667,304
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 5, 2024 · IPR2024-01023 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all petitioned grounds because Roku showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that” slip op. at 2

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

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation. Petitioner proposes the following construction: “authentication processes that are performed by independent roots of trust—i.e., roots of trust with trust determinations that are independent of the outcome of the other.” Reply 3 (citing Ex. 1001, 8:16–38 (“the secondary CA server follows rules (e.g., CA messages) of the primary CA server to manage a secondary subscriber management system”)); see also id. at 5 (“‘independent’ . . . identifies how the first and second roots of trust” “arrive at their first and second authentication determinations, without relying on the output of the other”). Petitioner also asserts that Patent Owner’s patentability argument hinges on a construction of “independent” such that “‘independent’ as used to modify the first and second roots of trust must be construed as independently controlled,” which Petitioner asserts is inconsistent with the ’236 patent claim language and specification. Id. at 1. Patent Owner, for its part, denies that it is advocating for a construction where the two roots of trust are “independently controlled.” Sur-Reply 3. Patent Owner does not offer a construction of the “independent authentication” limitation, citing an unilluminating description where “the client authentication in the secondary security domain is completely independent from the client authentication in the 8 The parties are reminded of the Board’s sanction authority for non-compliance. 35 U.S.C. § 316(a)(6); 37 C.F.R. § 42.12(a)(1). primary security domain.” Id. at 4 (citing Ex. 1001, 8:33–35). On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 130[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 32 and 66 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (stating “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9

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

    “Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir.1991)). We find that, at this stage of the proceeding and based on the present record, Petitioner provides sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 4, 2024 · IPR2024-01024 · APJ Brian P Murphy · IPR · Institution

  Instituted IPR on claims 48–50, 57, 82–84, 91, 116–118, 125, and 140–142; the petition showed a reasonable likelihood of anticipation by Russ, but not obviousness over Russ.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11

  • Parallel petitionsOther

    “5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be 5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004. considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

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

    “On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 140[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 48, 82, and 116 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• Siemens Mobility, Inc. / Ground Transportation Systems USA, Inc. et al. v. Metrom Rail, LLCInstitution denied
  PTAB · Nov 19, 2024 · IPR2024-00947 · APJ Stacey G White · IPR · Institution

  The Board denied institution of IPR for claims 1–18 under § 325(d), finding substantially the same art and arguments had been presented during prosecution and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “In determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office.”9 35 U.S.C. § 325(d). Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, Paper 6 at 8.” slip op. at 11

  Discretionary denialcites Phillips · Graham
  Patents in suitUS 9,731,738
• K/S Himpp v. Bragi GmbHAll claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00901 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–16 are unpatentable under § 103 over the Hensen-based combinations, including combinations with the LG Manual or Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals are very similar, and we find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In addition, Petitioner filed the Declaration of Brian W. Anthony, Ph.D. and the Reply Declaration of Brian W. Anthony, Ph.D. in support of its Petition.8 Ex. 1002 (“Anthony Decl.”); Ex. 1033 (“Anthony Reply Decl.”).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “This Manual has been designated guidance document USPTO- P-1. The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended only to provide clarity to the public regarding existing requirements under the law or agency policies. However, given that, to our knowledge, there is no pertinent case law on this issue, we find the PTO guidance to be a persuasive interpretation of the statute. See Tr. 34:2–12, 48:1–4. Thus, we follow the PTO guidance, which explicitly requires that the exceptions of 35 U.S.C. 102(b)(1)(B) are only applicable when the subject matter” slip op. at 14

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

    “Other than disputing the prior art status of the Hensen Video, which as discussed above is unfounded, Patent Owner does not specifically challenge the motivation for combining the Hensen Patent and the Hensen Video. See generally PO Resp. We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinning for the proffered combination, and has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine the Hensen Patent and the Hensen Video as argued.” slip op. at 24

  Patent outcomesUS 10,635,385 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,635,385
• Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8

  • PTAB / AIA Trials › §315(e) estoppelMixed

    “Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9

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

    “caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13

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

    “to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26

  Patent outcomesUS 10,681,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,009
• Nearmap US, Inc. v. Pictometry International Corp.Institution denied
  PTAB · Oct 10, 2024 · IPR2024-00729 · APJ Russell E Cass · IPR · Institution

  The Board denied institution on all grounds because the Petition did not sufficiently explain how the asserted references teach claim 1’s control data limitation or establish unpatentability of the challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “The question before us is not whether we could come up with a way to understand how the asserted prior art could render the challenged claims unpatentable, but rather did Petitioner provide the arguments and evidence to show that the challenged claims are unpatentable. Here, Petitioner has not met that burden and as such, Petitioner has not shown by a reasonable likelihood that any of the challenged claims are unpatentable.” slip op. at 22

  • BurdenDenied

    “contentions with sufficient particularity. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”). We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner that the Petition fails to sufficiently explain how the combination of Loewen and Fujimoto teaches the “control data” in Petitioner’s proposed construction. Neither Petitioner’s claim chart for limitation [1.f] nor the other portions of the Petition identified in Petitioner’s Reply identify what disclosure in Loewen or Fujimoto corresponds to this “control data,” or why this “control data” would be inherent in the disclosures of those references. Additionally, as discussed above, to the extent Petitioner is relying on Dr. Forsyth’s Declaration to provide argument not set forth in the Petition, such reliance would be an improper incorporation by reference. And, in any event, Dr. Forsyth also does not identify with specificity what disclosures of Loewen or Fujimoto correspond to the “control data” in Petitioner’s proposed construction. Finally, Petitioner’s Reply does not explain how Loewen’s disclosure that the computer “triggers” the still cameras to capture images involves “control data,” or why one of ordinary skill would understand that “control data” is necessarily sent as part of this “triggering.” Consequently, we determine that Petitioner has failed to sufficiently show that the combination of Loewen and Fujimoto teaches element [1.f], and thus has failed to establish a reasonable likelihood that claim 1 is unpatentable over this combination. Because Petitioner’s other grounds are all directed to claims that depend from claim 1, Petitioner has failed to sufficiently show unpatentability of those claims as well.” slip op. at 25

  § 103 obviousnesscites KSR
  Patents in suitUS 9,182,657
• Nearmap US, Inc. v. Eagle View TechnologiesInstitution denied
  PTAB · Oct 9, 2024 · IPR2024-00716 · APJ Stacey G White · IPR · Institution

  The Board denied institution because the Petition did not explain with particularity how the cited references taught the challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have “a bachelor’s degree or higher in computer science, computer engineering, or an equivalent educational background, or at least five years of industry experience in software development. Pet. 17 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not address the level of ordinary skill in the art in its papers. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

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

    “Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 7

  • BurdenDecided for patent owner

    “We agree with Patent Owner. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13

  Claim constructioncites Phillips
  Patents in suitUS 10,671,648

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.