- 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 - Netskope, Inc. v. Fortinet, Inc.Institution deniedPTAB · Sep 11, 2023 · IPR2023-00457 · APJ James P Calve · IPR · Institution
The Board denied institution because Netskope did not show a reasonable likelihood that claims 1–9 were unpatentable on any of its four §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore deny institution of an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties substantially agree on the level of ordinary skill in the art and differ mainly in the level of experience required for different levels of education. We consider Patent Owner’s proposed level of ordinary skill to be slightly more consistent with the ’968 patent and the asserted prior art, and we apply it in our obviousness analysis below. We note, however, that our decision would be the same under either party’s proposed definition of the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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 a 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.” 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 agree that no claim constructions are needed. Pet. 21; Prelim. Resp. 15. Having considered the record, we determine that no express claim construction is necessary to reach our decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“3. Motivation to Combine Petitioner contends that a skilled artisan would have been motivated to combine Jordan and FortiGate because FortiGate analyzes content in real-time and downloads new or updated virus definitions to identify suspicious network traffic, and this capability would improve Jordan’s complementary system, which generates and updates rules for malware detection. Pet. 25.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 9,231,968 - Netflix, Inc. v. Ca, Inc.All claims unpatentablePTAB · Aug 23, 2023 · IPR2022-00322 · APJ Jean R Homere · IPR · Final written decision
Claims 1–20 are unpatentable under § 103(a) over Verbeke, with claims 5, 11, 14, 17, 19, and 20 also unpatentable over Verbeke and Jalan, with or without Neiman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, we observe that Petitioner’s undisputed assessment of a person of ordinary skill in the art is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355. Therefore, for purposes of this Decision, we adopt Petitioner’s assessment, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 19. This assessment is consistent with the ’419 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner proposes to construe “a procedure of [an/the] application” as “a subpart of [an/the] application.” Pet. 20 (citing Ex. 1003 ¶¶ 62–67). Patent Owner characterizes the proposed claim construction as being “not material” to the arguments in its Response, and thereby declines to offer an alternative claim construction. PO Resp. 13. Based on the record before us, we do not discern a need to provide any express claim constructions because doing so would not change the outcome of the analysis below. See 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 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We have reviewed Petitioner’s contentions and the underlying evidence and find those contentions to be persuasive. In particular, Petitioner’s element-by-element (including the preamble) analysis for claim 1, as well as the specific references to Verbeke’s teachings provide explanation and evidence that sufficiently support Petitioner’s contentions. For the reasons discussed below, we do not agree with Patent Owner that the analysis set forth in the Petition fails to show that Verbeke teaches a first node telling a plurality of nodes to perform a same operation.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Our Review Based on the record before us, and, we agree with Petitioner Verbeke teaches the limitations of dependent claims 5, 11, 14, 17, 19, and 20. In particular, we agree with Petitioner that Verbeke’s disclosure of a job submitter submitting a code to its framework for distribution to worker nodes teaches the first node sending the code to the plurality of nodes, albeit via its framework, to instruct the plurality of nodes how to perform an operation, as well as what to do the result of the operation. Pet. 60. We further agree with Petitioner that Jalan’s parallelization and Neiman’s job division would complement Verbeke’s teaching to predictably result in a distributed computing system, which processes a job more efficiently between a plurality of nodes. Id. at 60–61. We have reviewed Petitioner’s arguments and the underlying evidence cited in support thereof, and we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 5, 11, 14, 17, 19, and 20 are unpatentable under § 103(a) as obvious over the combination of Verbeke with Jalan, as well as the combination of Verbeke with Jalan, and Neiman.” slip op. at 40
Patent outcomesUS 8,656,419 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,656,419 - Box, Inc. / Dropbox, Inc. v. Topia Technology, Inc.Institution deniedPTAB · Aug 10, 2023 · IPR2023-00431 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution on both §103 grounds because the petition did not show a reasonable likelihood that the challenged claims required priority assignment and comparison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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 that follow, we determine that Petitioner has not demonstrated that there is a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. For the reasons set forth below, and pursuant to 35 U.S.C. § 314, we do not institute inter partes review of claims 1–4, 8–11, and 13–16 of the ’787 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science (or a similar degree) with two years of work experience in developing software, including at least some experience with storage, synchronization, and human-computer interaction technologies.” Pet. 6 (citing Ex. 1028 ¶¶ 17, 21). Patent Owner does not 2 The Leahy-Smith America Invents Act (“AIA”) included revisions to § 103 that became effective on March 16, 2013. Because the ’787 patent claims priority, through a continuation application, to a provisional application filed before March 16, 2013, and neither party has argued that the provisions of the AIA apply at this time, we apply the pre-AIA versions of the statutory bases for unpatentability. See Ex. 1007, codes (60), (63). 3 U.S. Publication No. 2007/0174246 A1, published July 26, 2007 (Ex. 1016). 4 U.S. Publication No. 2005/0091289 A1, published April 28, 2005 (Ex. 1020). 5 U.S. Publication No. 2006/0190506 A1, published April 24, 2006 (Ex. 1019). 6 U.S. Patent No. 7,035,847 B2, filed March 15, 2002 (Ex. 1025). 7 U.S. Publication No. 2005/0120082 A1, published June 2, 2005 (Ex. 1026). proposed definition. See generally Prelim. Resp. At this juncture, we determine that the qualifications proposed by Petitioner for an ordinarily skilled artisan are consistent with the level of skill reflected in the Specification and in the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Neither party requests that we expressly construe any claim term. Pet. 6; see generally, Prelim. Resp. At this juncture, we determine that we do not need to expressly construe any claim term for this Decision. See 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We do not find that the Petition presents sufficient reasoning to support why a person of skill in the art would modify Sigurdsson’s priority algorithm in view of Shappell’s and Rao’s teachings. Shappell and Rao simply teach that metadata is sent first and content or raw data is sent second. Petitioner contends that because the metadata is known to usually contain less data than a file and the updated version is newer, Sigurdsson’s priority algorithm should be reconfigured to assign greater priority to the metadata and lower priority to the files. Pet. 23–24; Ex. 1028 ¶ 177. Petitioner asserts that Sigurdsson motivates the modification because of the “natural harmony” of Sigurdsson’s algorithm to prioritizing metadata. Pet. 23; Ex. 1028 ¶ 177. There is no explanation provided in the Petition, however, as to why a person of ordinary skill in the art would opt to modify Sigurdsson to assign and compare priorities by reconfiguring the priority algorithm of Sigurdsson when there is the simpler way of using software to simply send metadata first and content second as taught in Shappell/Rao. Absent explanation in the Sigurdsson’s priority algorithm to assign and compare priorities rather than employing the simpler method taught in Shappell/Rao of just sending metadata first, the Petition lacks rational underpinning.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,642,787 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00186 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of success on at least one claim and compelling merits for Scoda anticipation of claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum7 titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Memo”), which states, among other things, that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memo 2. “Compelling, 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.” Id. at 4. “This clarification strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Id. at 5. For the reasons that follow, although we find that Fintiv factors 1–5 weigh in favor of denying institution in this case, we determine that the Petition presents compelling merits as to the challenged claims, and thus, we decline to exercise our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’162 patent. Accordingly, we institute an inter partes review as to the challenged claims on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention of the ’091 patent would have had master’s degree or higher in the field of electrical engineering, computer engineering, or computer science, or would have had a bachelor’s degree in the same fields and two or more years of experience in internet communications. Pet. 15–16 (citing Ex. 1007 ¶¶ 30–31). Patent Owner does not dispute Petitioner’s definition for a person of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner because, based on the current record, this proposal appears to be consistent with the ’091 patent and the prior art of record and is supported by the testimony of Dr. Williams.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“recited in the Petition, does cite throughout to the asserted art and provides support for its assertions that the art discloses the claim language. We, therefore, determine Dr. Williams’s declaration is not without evidentiary support. See 37 C.F.R. § 42.63 (“Evidence consists of affidavits, declarations, transcripts of deposition, documents, and things.”). At this stage, we give weight to Dr. Williams’s testimony, which is the only testimony we have before us in this proceeding relating to the asserted art and how the art discloses the claim limitations. In contrast to the situation presented here, neither the petition nor the declarant in Xerox provided sufficient evidence to support the asserted positions; rather, the petition merely cited to the declaration which merely repeated the unsupported, conclusory assertions set forth in the petition. See Xerox Corp., IPR2022-00624, Paper 12 at 5 (stating the cited declaration testimony is conclusory and unsupported and adds little to the conclusory assertion for which it is offered to support); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”). That is not the case here. As noted above, however, the ultimate weight of Dr. Williams’ testimony will be determined in light of the full record adduced during trial.” slip op. at 28
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,516,091 - Bright Data Ltd. v. Oxylabs, UabInstitutedPTAB · Jul 18, 2023 · IPR2023-00187 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood of success on the Athas anticipation and Hallak–Matthys obviousness grounds; it did not reach the Scoda–Matthys ground.
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 ’457 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that all terms should have their plain and ordinary meaning. Pet. 14. Patent Owner responds that “[t]he ’457 Patent expressly defines a number of terms that are used in the claims,” and highlights several such definitions for the terms “web page,” “network appliance,” “browser,” and “embedded script.” Prelim. Resp. 6–7. In addition, Patent Owner proposes a construction for the second recitation in claim 1 of the phrase “a number of packets” that Patent Owner alleges is “consistent with both the specification and figures of the ’457 Patent.” Id. at 7–8. Having considered the positions of the parties, we find that for the purpose of this decision, it is unnecessary expressly to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). We, therefore, do not agree that Petitioner’s alleged failure to expressly address the meaning of claim terms should prevent us from instituting review as asserted by Patent Owner. See, e.g.,” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art of the ’457 patent would have had “a Master’s Degree or higher in the field of electrical engineering, computer engineering, or computer science, or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Pet. 14 (citing Williams Decl. ¶¶ 30–31). At this juncture, Patent Owner does not provide a description of an ordinarily skilled artisan. For purposes of this Decision, we adopt the level of ordinary skill as articulated by Petitioner. Based on the current record, this proposal is consistent with the ’457 patent, the prior art of record, and is supported by the testimony of Dr. Williams. See Williams Decl. ¶¶ 30–31.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Williams testifies that “a [person of ordinary skill] would recognize that there are advantages analyzing web page data, including metadata and packets to provide a more robust monitoring and filtering ability.” Williams Decl. ¶ 150. He concludes that “it would have been obvious to adapt Hallak to utilize metadata and packet level analytics as disclosed in Matthys to produce more detailed filtering and detection in protecting web clients and web-based applications.” Id. ¶ 151. He reasons further that “[t]he use of metadata and data packet analytics as suggested by Matthys into the Hallak process would have been an obvious implementation for a [person of ordinary skill] and would have also been done expecting success.” Id. At this stage we find this testimony consistent with the record, helpful, and credible. On the other hand, we do not find Patent Owner’s arguments to the contrary to be supported by any evidence of record at this stage. Prelim. Resp. 22–28. For example, Patent Owner argues that “[t]he Petition fails to explain how adding a script to be processed at the client would protect web clients or how this would be compatible with Hallak’s system.” Prelim. Resp. 23. But Dr. Williams testifies that adapting Hallak to use Matthys’s metadata and packet-level analytics would “produce more detailed filtering and detection in protecting web clients and web-based applications.” Williams Decl. ¶ 151. We, therefore, are not persuaded that Petitioner’s showing of motivation to combine these references is “deficient.” Prelim. Resp. 22–25. Nor do we agree, for reasons discussed supra, that Petitioner’s element-by-element analysis “fails to provide any explanation or specific details,” or that Dr. Williams “does not provide any clarification.” Id. at 25– 28.” slip op. at 23
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,924,457 - Netskope, Inc. v. Fortinet, Inc.InstitutedPTAB · Apr 26, 2023 · IPR2022-01587 · APJ James P Calve · IPR · Institution
The Board instituted inter partes review of claims 1–8 and 11–18 on all eight asserted obviousness grounds.
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 inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties substantially agree on the level of ordinary skill in the art. Consistent with these proposals, we adopt Petitioner’s proposal for purposes of this Decision, in addition to Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant experience also suffice. Based on the preliminary record, this level of ordinary skill appears to be consistent with the description of the relevant field and background art in the ’282 patent. See, e.g., Ex. 1001, 1:32–2:24.” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Mohapatra’s testimony evidences skilled artisans would have had a reasonable expectation of success in combining Nagayama and Crawford. Dr. Mohapatra testifies that Nagayama and Crawford describe improved content filtering systems for data transferred to an open network, and their overlapping objectives and technologies could complement one another to improve content filtering. Ex. 1002 ¶ 95. Dr. Mohapatra also testifies that Nagayama’s system “could be improved by including content-based filtering on a network service into a single policy” to expand the scope of the filtering rules to include parameters in a single filter rule. Id. ¶ 96. Dr. Mohapatra also testifies that Nagayama and Crawford filter network traffic for network services. Id. ¶¶ 119–125. Dr. Mohapatra testifies that skilled artisans know how to filter data at gateways for network services, watermarks, and other data using port numbers and packets. Id. ¶¶ 49, 54–61, 64–66, 70–73, 120. Petitioner cites Dr. Mohapatra’s testimony to support its contentions that skilled artisans could have combined Nagayama and Crawford with a reasonable expectation of success. Pet. 22–23 (citing Ex. 1002 ¶¶ 94–97), 35–37 (citing Ex. 1002 ¶¶ 119–122), 8–11 (citing Ex. 1002 ¶¶ 47–73). Patent Owner’s declarant, Dr. Black, testifies a skilled artisan would not have had a reasonable expectation of success in modifying Nagayama’s network security device (filtering means 60) to filter network traffic for network services and apply filter rules that are active for a network service due to the complexity of firewall systems and myriad design challenges. Ex. 2001 ¶ 45. We do not find this testimony persuasive at least because claims 1 and 11 do not claim a firewall of any particular configuration, much less one with any of the complex features and functions that Dr. Black discusses in his testimony.” slip op. at 26
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that no claim construction is needed except for the term “watermark.” Pet. 16. Petitioner asserts, “a watermark must include “(1) information indicative of one or more of a source, origin, owner, author of a document or a file, or a company identifier, and (2) a sensitivity level.” Id. at 17. Patent Owner does not dispute this construction but instead contends that the term need not be construed because it does not impact any pending dispute between the parties. See Prelim. Resp. 13. We do not rely on Petitioner’s proposed definition of watermark because an interpretation of this limitation is not necessary for resolving the parties’ dispute in this proceeding.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,237,282 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15
Patent outcomesUS 9,892,637 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,892,637 - Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution deniedPTAB · Apr 6, 2023 · IPR2022-01455 · APJ Lynne H Browne · IPR · Institution
Institution was denied for claims 11, 13–16, 19, and 20 because Petitioner did not explain why a skilled artisan would combine Merriman’s alternative embodiments.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that the Petition relies on two alternative embodiments for its invalidity theory without sufficient explanation of how or why a person of ordinary skill in the art would have combined these embodiments. See Prelim. Resp. 7–12. Merriman discloses a real time embodiment, wherein “the advertiser’s website reports activity in real [wherein] the advertiser’s web site keeps a user log file of visitor activity and reports the user log file back to the advertisement server.” Id. at 3:38– 41. In this latter embodiment, “[r]eporting of user log files may be by email or any other file transfer technique.” Id. at 3:41–42. Merriman further discloses that the real time embodiment uses “spotlight tags placed on specific pages in the advertiser’s web site” to provide feedback of individual user’s activities in real time back to the advertising server 14, whereas the other embodiment provides “data accumulated in a user activity list” via email or a file transfer operation. Ex. 1003, 4:45–48, 4:51–54, Fig. 2. Throughout its specification, Merriman describes these embodiments as mutually exclusive alternatives. See, e.g. Ex. 1003, code (57), 3:35–43, 4:44–5:3, 5:33–54. The Petition, however, “overlooks or ignores Merriman’s clear distinctions and relies on aspects of both alternative embodiments.” Prelim. Resp. 11. Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“F. Discretionary Denial Under 35 U.S.C. § 325(d) As we have determined that Petitioner does not demonstrate a reasonable likelihood of prevailing for any claim on any ground, we need not consider whether application of the Director’s discretionary authority to deny institution in accordance with 35 U.S.C. § 325(d) is appropriate in this proceeding.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7– 8. (citing Ex. 1002 ¶¶ 30–34). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical 1 Merriman et al., U.S. Patent No. 8,566,154 B2, issued Oct. 22, 2013 (Ex. 1004) (“Merriman”). 2 Rosenberg et al., U.S. Patent No. 6,073,241, issued June 6, 2000 (Ex. 1005) (“Rosenberg”). definition of the level of skill at this time. Prelim. Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,244,582 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034
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.