- PTAB · Feb 7, 2024 · IPR2023-01203 · APJ John A Hudalla · IPR · Institution
The Board instituted review of claims 6, 8, 11, 12, and 14–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 6, 8, 11, 12, and 14–20 of the ’253 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Meinhart, Petitioner contends a person of ordinary skill in the art “would have had at least [a] Bachelor of Science degree in mechanical engineering, electrical engineering, or a similar degree with one or two years of graduate school training or one to two years of industry experience in the fields of mechanical design, fluid mechanics, heat transfer, or electronics cooling.” Pet. 7 (citing Ex. 1003 ¶ 15). Petitioner further notes that “[l]ack of work experience could have been remedied by additional education, and vice versa,” and that “[s]uch academic and industry experience would be necessary to appreciate what was obvious and/or anticipated in the industry and what a [person of ordinary skill in the art] would have thought and understood at the time.” Id. at 7–8 (citing Ex. 1003 ¶ 16). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 5. 3 The present record does not include any evidence of secondary considerations of nonobviousness. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’253 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe each claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the present record, we are persuaded preliminarily that an ordinarily skilled artisan considering Karppanen’s teachings would have had reason to position Karppanen’s transducers to measure the temperature of the airflow in the front channel. Karppanen expressly discloses “a circulating air flow” that standardizes the temperatures of the display and display casing. Ex. 1008, 9:9–14, 9:18–25. Karppanen’s circulating fans that create the airflow are controlled based on temperatures measured within the device by transducers. Id. at 9:14–18. Although Karppanen discloses disposing the transducers “[i]n the device and display casing,” it does not expressly state that they measure the temperature of the airflow in the front channel. Id. at 9:14–16. Nevertheless, Dr. Meinhart testifies that an ordinarily skilled artisan “would position one or more temperature sensors in locations to sense temperatures that indicate the temperatures of certain electronics” and that one location indicative of display temperature is “in a region of air flow immediately downstream from the display element, after air has flown past the display.” Ex. 1003 ¶¶ 168, 170. We find this slight modification to be a predictable variation of Karppanen based on the established function of its transducers, which is to directly or indirectly measure the temperature of LCD components. See KSR, 550 U.S. at 401 (“A [tribunal] must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.”).” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,842,253 - PTAB · Feb 7, 2024 · IPR2023-01202 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–7, 9–11, and 13 on all asserted 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
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–7, 9–11, and 13 of the ’311 patent on all grounds of unpatentability presented.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Patent Owner’s Disclaimer of Claim 12 As indicated above, Patent Owner filed a statutory disclaimer of claim 12 of the ’311 patent. See Ex. 2007. In view of Patent Owner’s statutory disclaimer, we treat claim 12 as having never been part of the ’311 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C. §] 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). And, because no inter partes review will be instituted based on disclaimed claims, we do not consider claim 12 to be within the scope of this proceeding. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review in view of a statutory disclaimer of all challenged claims). Thus, we confine our unpatentability analysis to claims 1–7, 9–11, and 13, the challenged claims of the ’311 patent that have not been disclaimed.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Meinhart, Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in mechanical engineering, electrical engineering, or a similar degree with one or two years of graduate school training or one to two years of industry experience in the fields of mechanical design, fluid mechanics, heat transfer, or electronics cooling.” Pet. 7 (citing Ex. 1003 ¶ 15). Petitioner further notes that “[l]ack of work experience could have been remedied by 3 The present record does not include any evidence of secondary considerations of nonobviousness. additional education, and vice versa,” and that “[s]uch academic and industry experience would be necessary to appreciate what was obvious and/or anticipated in the industry and what a [person of ordinary skill in the art] would have thought and understood at the time.” Id. (citing Ex. 1003 ¶ 16). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’311 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[n]othing in the specification or prosecution history of the ’311 Patent expressly defines any term appearing in any claim of the ’311 Patent,” and that “the Board does not need to construe any claim term for purposes of evaluating the prior art in this Petition.” Pet. 7. Petitioner concludes that “for purposes of this proceeding only, Petitioner believes that no claim term requires construction.” Id. Likewise, Patent Owner contends that “claim construction is not necessary for the Board to determine that the Petition fails to demonstrate a reasonable likelihood that any challenged claim of the ’311 patent is unpatentable.” Prelim. Resp. 5. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only 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))).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,311 - PTAB · Jan 19, 2024 · IPR2023-00973 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claim 1 based on compelling and reasonably likely obviousness challenges over Redlich alone and Redlich with Ozzie.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner’s argument that Redlich is the same or substantially the same as the ’825 and ’047 patents. Prelim. Resp. 6–11. In contrast to Redlich, the ’825 and’047 patents are not prior art to the ’244 patent. Patent Owner does not dispute Petitioner’s showing that the ’825 and ’047 patents were issued after the ’244 patent’s filing date and are not prior art to the ’244 patent under pre-AIA §§ 102(a), (b), or (e). Pet. Reply 1–2 & n.1 (timelines); see PO Sur-reply 1 (reproducing Petitioner’s timelines). Moreover, Patent Owner points to nothing in the ’244 patent’s file history that would indicate the Examiner considered or applied the ’825 and ’047 patents or the corresponding pre-issuance publications as prior art under §§ 102 or 103. As stated above, Redlich is not listed in the ’244 patent under “References Cited,” and the same is true for the ’825 and ’047 patents and the pre-issuance publication of the ’047 patent. Ex. 1001, code (56). Although the ’825 and ’047 patents were the basis for non-statutory obviousness-type double patenting rejections that were overcome with a terminal disclaimer (Ex. 1002, Part 5, 2375–77, 2384, 2390), the Examiner made no prior art rejection under §§ 102 or 103 based on these patents or the corresponding pre-issuance publications. We also disagree with Patent Owner’s argument that the Petition presents the same arguments as considered by the Office during examination. Prelim. Resp. 2, 6, 12–15. Petitioner’s obviousness challenge based on Redlich and Ozzie is substantially different from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. Patent Owner argues that teaching cloud-based computing and rely on the same rationale for combining the prior art teachings. Id. at 12–14. But Patent Owner makes no argument that Fahlman (cited by the Examiner) is the same or substantially the same as Redlich (relied on by Petitioner). At this stage, Patent Owner does not dispute Petitioner’s contention that Redlich discloses features that were added to the claims to obtain allowance over Fahlman. Pet. 5–8. Petitioner’s undisputed contention distinguishes the obviousness challenge based on Redlich and Ozzie from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. In sum, we determine that the Petition is not based on the same or” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitutedDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling. V. COMPELLING MERITS ANALYSIS A. Legal Standard As discussed infra, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors,” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. REASONABLE LIKELIHOOD UNDER 35 U.S.C. § 314(a) For the reasons discussed in Section V above, we determine that the information presented in the Petition and the Preliminary Response shows a reasonable likelihood that Petitioner would prevail on its challenge to claim 1 of the ’244 patent. Accordingly, we institute an inter partes review. VII. ORDER It is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claim 1 of the ’244 patent is instituted commencing on the entry date of this Decision; and” slip op. at 25
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesOther
“The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112, para. 6 (pre-AIA). This statutory provision presumptively does not apply to a claim term that lacks the word “means,” but the presumption can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Under our rules, a petition must provide a construction for a means- specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104. Petitioner proposes constructions for the claim terms it identifies as means-plus-function limitations. Pet. 11–15. Patent Owner does not address claim construction at this stage of the proceeding. For purposes of this Decision, we apply Petitioner’s proposed constructions, as follows. Claim term Function Corresponding structure” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,468,244 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - PTAB · Oct 23, 2023 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Institution
The Board instituted review of claims 1, 3, 4, and 8 on all asserted grounds, finding a reasonable likelihood that Rauhala anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’825 patent and prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). On balance, Petitioner’s proposal of education plus a minimum of two years of experience is a better reflection of the level of skill in the prior art. For example, Rauhala presents functional block diagrams of signal strength information. See, e.g., Ex. 1004, Figs. 1–5, ¶¶ 15, 17, 19, 21. Similarly, Masaaki’s Figure 1 shows “a circuit block diagram of a reception unit 40 of a pager” according to an embodiment of the invention. Ex. 1005, 5:3–4. The block diagram shows various components, including an antenna, amplifiers, bandpass filters, a mixer, an oscillator, and a detection circuit. Id. at 5:5–8, Fig. 1. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision. Our decision, however, would not change if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“strength indicator circuits 440 and 450, the written description unambiguously discloses that each circuit determines the cumulative signal level of the desired signal and the interfering signals. Neither circuit determines only the signal strength of the interferer signals, nor does a circuit determine only the signal strength of the desired signal. In other words, the written description does not support a limited reading of the claim language so as to require two separate circuits—one circuit for determining a a signal strength of the desired signal. Thus, based on this preliminary record, we do not construe the circuit limitation as requiring the wireless transceiver necessarily to have two circuits, one circuit for determining a signal strength of the interferer signal and a different circuit for determining a signal strength of the desired signal, because, under that reading of the claim, the only embodiment in the written description would not fall within the scope of the claim. It is well-established that “[s]uch an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support,” which is not present in this record as discussed below. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“As explained above, however, on this preliminary record, we do not interpret the circuit limitation to impose a timing requirement such that the determining has to occur at precisely the same time. Nor at this preliminary juncture do we read a precise timing requirement into the circuit limitation based on written description disclosure that the desired signal and the interferer signal are part of the received signal input spectrum. As explained above, for example, the written description describes a circuit providing a cumulative signal level corresponding to the sum of the desired and interfering signals. Ex. 1001, 6:59–67. As such, the written description describes making the determinations on two signals that are part of the received signal input spectrum. Patent Owner argues that Rauhala does not disclose “two determinations of two different signal strengths together.” Prelim. Resp. 40. We do not agree with Patent Owner on this preliminary record. Rauhala’s disclosure of providing control bits based on the comparisons of the signal strengths to respective thresholds, discussed above, also undermines Patent Owner’s argument that detector DET, which (i) provides one or the other and (ii) needs to be re-tuned to read the other signal, cannot anticipate the claim. Notably, for example, Rauhala discloses setting control bits based on comparisons of the respective signal strengths to thresholds: cM. Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the same time smaller than Sn. Otherwise, signal cA is 1. Signal cA is taken to amplifiers Al and A2. Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Ex. 1004 ¶ 17 (emphases added). Here Rauhala describes providing control signals based on the strength of both signals from the receive and neighboring channels, which undermines Patent Owner’s arguments.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,129,825 - PTAB · Oct 11, 2023 · IPR2023-00617 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1, 3, 12, 14, and 15 on all asserted obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons given, Petitioner has demonstrated a reasonable likelihood of prevailing on this challenge to claims 1 and 12.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 9 (citing Mudge Decl. ¶ 87). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Mudge explains that “[a person of ordinary skill] would have understood that, while Figure 1 does not depict lines connecting interconnect 108 to core 112-1 and to L2/L3 cache hierarchy, Figure 1’s arrowed lines represent the hierarchical organization of reports and commands between components, not their physical connections.” Mudge Decl. ¶ 99. Dr. Mudge’s testimony is supported by Bose’s description of Figure 1 as showing “a hierarchical power-performance monitor.” Ex. 1005, 3:59–61. Elsewhere, Bose refers to this figure as showing a “management hierarchy” (id. at 6:18) and explains that “[t]o clearly define the responsibility of each layer of the hierarchy, the layers are designed and configured such that the layers report upward and command downward in the hierarchy” (id. at 6:49–52). This disclosure in Bose supports Dr. Mudge’s conclusion that “[b]ased on Bose’s depicted and described hierarchical organization of reports and commands between components, and, based on Bose’s use of the well-known term of art ‘interconnect,’ it would have been obvious to a [person of ordinary skill] that Bose’s interconnect 108 couples and connects to each core and to L2/L3 cache hierarchy.” Mudge Decl. ¶ 99. We find that on this record Petitioner has demonstrated sufficiently at this stage that this element is met by Bose.” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,898,494 - PTAB · Oct 11, 2023 · IPR2023-00567 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that Qualcomm would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, Paper 6 at 10.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“physics, or a related field” and would have had “at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 13 (citing Mudge Decl. ¶ 25). At this stage, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any term requires explicit construction.” Pet. 14 (citing Mudge Decl. ¶¶ 77–78). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00459 · APJ James P Calve · IPR · Institution
Instituted IPR of claims 1–7 and 10–31 on all eight asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had at least a B.S. degree in computer science, computer engineering, or electrical engineering (or equivalent experience) and . . . at least two years’ practical experience with computer networking and computer security.” Pet. 19. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 8. Patent Owner asserts that its positions would be the same under either proposal. Id. We adopt Patent Owner’s proposal as more consistent with the prior art and the ’825 patent. Our decision would be the same under either formulation.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Nonetheless, we provide the following guidance for the meaning of “fabric,” in claims 1, 15, 21, and 27 to assist the parties in the upcoming trial, and encourage the parties to address this term at the appropriate stages of the trial. At this stage of the proceeding, based on the current record, we interpret “fabric” as “a network topology such as the physical structure of a switch or network.” This is consistent with an ordinary, customary meaning. Ex. 2003, 3 (defining a “fabric” as “[a] descriptive term referring to the physical structure of a switch or network.”) (cited in Prelim. Resp. 12). This meaning is consistent with Patent Owner’s assertion that “fabric” is an “interconnected topology” in “enterprise networks.” Prelim. Resp. 10. Patent Owner’s declarant, Dr. Black, testifies that “[a]s enterprise networks became larger and larger, a complex, interconnected topology known as a ‘fabric’ was developed to handle the management of such networks.” Ex. 2001 ¶ 44 (cited in Prelim. Resp. 10). Dr. Black testifies that “a fabric of network devices (such as switches or access points for each subnetwork) was developed to manage network traffic between subnetworks, and to and from the Internet.” Id. This meaning is consistent with the ’825 patent, which describes a private network 120 topology of computers and servers coupled together by a local area network (LAN) or a wireless LAN. Ex. 1001, 5:3–9, Fig. 1. “FIG. 2 shows a topology 200 of a cooperative security fabric that consists of network security appliances of FIG. 1.” Id. at 5:50–51 (emphasis added). Root node 220 corresponds to network security appliance 121 and acts as a wide area network (WAN) role in topology 200 to connect a private network to other networks or the Internet. Id. at 5:52–56. It is the outermost network security appliance of the cooperative security fabric. Id. at 5:52–55.” slip op. at 9
- BurdenInstituted
“At this stage, based on the evidence and arguments, we conclude that Petitioner has provided sufficient evidence at this stage to establish that Chandra discloses element 1[b].” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,084,825 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Sep 8, 2023 · IPR2023-00458 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 8–17, and 21–27 on all petitioned grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art The parties substantially agree on the level of ordinary skill in the art. Petitioner asserts that a skilled artisan “would have had a B.S. in computer science, computer engineering, or electrical engineering, with at least two years’ experience in computer networking/security.” Pet. 15. Patent Owner asserts that a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of network and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 15–16. Patent Owner asserts that the positions set forth in the Preliminary Response would be the same under either parties’ proposal. Id. at 16. We adopt Petitioner’s proposal as more consistent with the prior art and the ’678 patent. Our decision would be the same under either formulation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Interpretation We interpret claims “using the same claim construction standard that would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). The parties assert that the claims should be given their ordinary and customary meaning in light of the specification and no claim constructions are necessary at this time. Pet. 15; Prelim. Resp. 16. We agree that no express claim constructions are required at this time to render our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“These arguments do not address Petitioner’s contentions that a skilled artisan would have combined Shikfa’s searchable encryption mechanism with Cidon’s encryption technique that divided content into segments with a segment identifier for each chunk to enable a search for encrypted chunks to “allow Cidon’s system to search and locate files on a segment-by-segment basis” as “implemented in Herrmann’s gateway server.” Pet. 43–44 (citing Ex. 1004, Fig. 13; Ex. 1006 ¶¶ 39, 50; Ex. 1002 ¶¶ 105–107). Petitioner asserts that the modified system would have searched encrypted file content without requiring such capability at a storage provider to maintain privacy, to protect confidential information, and to allow storage on cloud storages that lack search capability. Pet. 44 (citing Ex. 1006 ¶ 50; Ex. 1002 ¶ 105). Shikfa’s searchable encryption would improve Cidon’s ability to search the content of encrypted document segments. KSR, 550 U.S. at 417 (using a technique that improved one device to improve other devices in the same way is obvious unless its application is beyond the level of ordinary skill in the art). The improvement preserves the privacy of files, locates files by segments, and allows storage on cloud providers lacking search ability. Pet. 44; see DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (holding that an implicit motivation exists when an “improvement” makes a product/process stronger, cheaper, faster, lighter, smaller, more durable, and/or more efficient).” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,280,678 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Aug 30, 2023 · IPR2023-00456 · APJ James P Calve · IPR · Institution
Instituted IPR on claims 1–28 on all three §103 grounds based on the Board’s finding of a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“in computer science, computer engineering, or electrical engineering (or equivalent experience) and at least two years’ practical experience with computer networking and computer security.” Pet. 15. Patent Owner asserts a skilled artisan “would have had a Bachelor of Science degree in electrical engineering and/or computer science, and two years of work or research experience in the fields of networks and data security, or a Master’s degree in electrical engineering and/or computer science and one year of work or research experience in related fields.” Prelim. Resp. 13 (asserting that the positions in the Preliminary Response are the same under either proposal). The two formulations are similar, differing mainly in the level of experience required. We adopt Patent Owner’s proposal as more consistent with the ’856 patent and prior art, but our analysis would be the same under either party’s proposal.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claims in a civil action [held] under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe claims “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. We construe the claims only to the extent necessary to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties assert that claim terms should receive their plain and ordinary meaning, and no claim terms require construction. Pet. 16; Prelim. Resp. 13–14. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reasonable expectation of success (Prelim. Resp. 24), “[t]he reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Absolute predictability of success is not required. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Given the broad scope of natively mounted, the disclosure that AWS provides software to natively mount files (Ex. 1001, 5:23–32), and Burdett’s similar native mounting of cloud files to a scanning service (see Ex. 1004, 23:33–24:18, 25:34–55, 27:20–29:41), Petitioner has shown a reasonable expectation of success in combining Burdett and FortiSandbox to meet this limitation. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue] is entirely silent on how to transmit user locations and maps from a server to a user’s mobile device, suggesting that a person of ordinary skill in the art was more than capable of selecting between the known methods of accomplishing this.”). Descriptions of native mounting in the ’856 patent, FortiSandbox, and Burdett indicate that native mounting can be accomplished with a reasonable expectation of success. In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994) (“[T]he Board’s observation that appellant did not provide the type of detail in his specification that he now argues is necessary in prior art references supports the Board’s finding that one skilled in the art would have known how to implement the features of the references.”). Regarding the motivation to combine, FortiSandbox natively mounts network shares to security devices to scan suspicious files for malware (Ex. 1005, 113–115; Pet. 18–19), and Petitioner contends that this technique would improve Burdett similarly to perform malware scans of public cloud store files via native communications while preventing users from accessing malicious files (Pet. 19, 29–30). See KSR, 550 U.S. at 417.” slip op. at 24
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,036,856
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.