- PTAB · May 23, 2024 · IPR2024-00215 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–10 on all grounds, finding a reasonable likelihood that claim 1 would be obvious over Foster and Hayhurst.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- BurdenDecided for petitioner
“The record at this stage sufficiently supports Petitioner’s argument that Foster’s receiver 430 stores content that it receives. Pet. 65 (citing Ex. 1006 ¶¶ 4, 8, Fig. 8). According to Dr. Rubin’s annotations, receiver 430 can be a personal computer (PC) or set-top box. Ex. 2003 ¶ 83 (labeling the receiver in Figure 16 as such). This is consistent with Foster. Ex. 1006 ¶¶ 49, 51 (describing PC 18 and a set-top box). Foster describes how the receiver stores encrypted content. See id. ¶¶ 8, 79. For example, Foster explains, “Once received, recipient 430 can then synchronously store the encrypted content.” Id. ¶ 79, cited in Pet. 68–69. According to Foster, “The encrypted title key is then attached to the content packet and the header for synchronized transmission to, or storage by a receiver.” Id. ¶ 8 (emphasis added), quoted in Pet. 65. For at least the reason that Foster teaches a PC or at this stage that Foster’s data set is “for storage.” See Pet. 65–66, 80–82. At this stage, we credit Dr. Bhattacharjee’s testimony (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s (Ex. 2003 ¶¶ 108–109) because it is better supported by the current record. In particular, we see no support for Dr. Rubin’s testimony that Foster’s receiver cannot provide long-term storage or is unlike the ’854 patent’s storage devices. See Ex. 2003 ¶¶ 108– 109. For instance, we see little difference between Foster’s PC 18 and the magnetic or optical disk, USB key drive, or other devices that Dr. Rubin claims are long-term storage devices. Ex. 1001, 67:16–19, cited in Ex. 2003 ¶¶ 108–109. PC 18 has “data storage.” Ex. 1006 ¶ 75. Foster explains “optical media” or “magnetic media” are types of data storage. Id. Foster also states that the receiver stores data. Id. ¶ 8. In view of these parts of Foster, we credit Dr. Bhattacharjee’s testimony that Foster’s receiver has data storage (Ex. 1003 ¶¶ 221–222) over Dr. Rubin’s testimony that Foster’s devices are unlike those described in the ’854 patent (Ex. 2003 ¶¶ 108–109), at this stage.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 6 (citing Ex. 10032 ¶¶ 37–38). Petitioner also asserts that a “higher level of education may substitute for less experience.” Id. Patent Owner does not respond to Petitioner’s assertions or argue for a definition of a person of ordinary skill in the art. See Prelim. Resp. Here, we apply the skill level proposed by Petitioner. Pet. 6.” slip op. at 4
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“key (the encryption operation Petitioner contends would be reordered/repeated).” Id. at 16. Dr. Rubin explains why reordering the steps in the way that Petitioner proposes would have been pointless: Indeed, a [person of ordinary skill in the art] would recognize that encryption with the alleged external key would not be an appropriate step to repeat or reorder because it is parsed along with the data set into portions and those portions are then encrypted. Consequently, encrypting the shares with the alleged external key (i.e., the session master key) would render the splitting and encryption of the alleged external key pointless. Ex. 2003 ¶¶ 52–53. Dr. Bhattacharjee does not fully explain why the key that is parsed and encrypted is then used to further secure the data. Ex. 1003 ¶¶ 110–111. Thus, we credit Dr. Rubin’s testimony (Ex. 2003 ¶¶ 52–53) over Dr. Bhattacharjee’s (Ex. 1003 ¶¶ 110–111) on this issue. For this additional reason, Petitioner has not shown that Orsini discloses the Different-Order Version. See Pet. 33–35.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,452,854 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · May 13, 2024 · IPR2024-00226 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted obviousness grounds based on Evenhaim; Evenhaim with Settimi; Dick with Landi; and Dick, Landi, with Murphy.
RulingsInstitution decision- 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. See 35 U.S.C. § 314(a) (2018) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”). We therefore institute inter partes review as to all of the challenged claims of the ’641 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (2023) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Clark Decl. ¶ 22). Petitioner adds that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“from Patent Owner’s claim-construction brief in the related district court litigation and “adopts these constructions for this proceeding.” Pet. 8 (citing Ex. 1010, 9–20). Patent Owner’s brief identifies these as “disputed claim terms.” Ex. 1010, i (Table of Contents). The brief indicates that Petitioner disputes Patent Owner’s construction for each of the terms. Id. at 1 (referring to the parties’ Joint Claim Construction Statement). As Petitioner expressly “adopts these constructions for this proceeding” (Pet. 8), we understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under 37 C.F.R. 42.104(b)(3) (2023). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp., 868 F.3d at 1017. Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 16
Claim constructioncites KSRPatents in suitUS 9,118,641 - Netskope, Inc. v. Fortinet, Inc.All claims unpatentablePTAB · Apr 8, 2024 · IPR2023-00030 · APJ James P Calve · IPR · Final written decision
Claims 1–22 are unpatentable under § 103 over the Wang-based and Chambers-Terrill-based combinations listed in the decision.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The parties substantially agree on the level of ordinary skill in the art. Consistent with their proposals, we adopt Petitioner’s definition with Patent Owner’s contention that a master’s degree in electrical engineering and/or computer science and one year of relevant work or research experience also suffice. PO Resp. 7 (asserting that “Patent Owner’s description of the level of ordinary skill in the art is essentially the same as that of Petitioner”). This level of ordinary skill is consistent with the description of the relevant field of invention and background art in the ’941 patent (see Ex. 1001, 1:14–3:51) and the prior art. However, the outcome of our Decision would be the same under either party’s proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundPlain and ordinary meaningDecided for petitioner
“The ’941 patent describes prior art firewalls as “often used to provide segmentation within internal networks [to] help stop the spread of attacks” and provide “the ability to see and control internal network traffic [that] can be lost” when firewalls move to the cloud. Ex. 1001, 1:35–40 (emphasis added). Thus, prior art firewalls can control internal network traffic between endpoints within the network. Nor does the claim language exclude prior art firewalls from controlling endpoint to endpoint connections. 4. Conclusion We determine that the ’941 patent does not clearly and unmistakably disavow legacy firewalls. The sole use of that term in the specification does not identify what features are disavowed (Ex. 1001, 4:52–67; Reply 2), and the ’941 patent describes prior art firewalls as having features and functions that P/PoPs perform (id. at 3–5) including segmenting internal networks and controlling internal network traffic. Ex. 1001, 1:35–40; see Tr. 12:18–15:1. Thus, we determine that “controlling endpoint to endpoint connections within the enterprise network” has its ordinary and customary meaning, which may include controlling endpoint to endpoint connections via firewalls. We discuss this limitation further in Section III.D.2.c. infra.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“5. Analysis We find that Petitioner’s asserted modifications with Pasdar would have improved Wang because Wang provided services at the firewall level, but Pasdar “implement[ed] these services at the P/PoP(s), offloading some tasks from individual firewalls and thus . . . enhancing performance.” Reply 17 (“Patent Owner ignores other benefits, like the flexibility and granular customization, that Pasdar’s P/PoP system would offer to Wang’s system.”). We find that Pasdar’s P/PoPs would customize Wang’s initial settings to enhance security as the network expands and would have allowed Wang’s distributed devices to leverage a single global perimeter policy for security, privacy, and application resiliency and availability as Pasdar teaches. Pet. 45 (quoting Ex. 1005 ¶ 31; citing Ex. 1002 ¶ 106); id. at 43–45; Reply 20. We agree with Dr. Lee’s testimony that a skilled artisan would have been motivated to add Pasdar’s functionalities to route communications to a P/PoP and customize a P/PoP’s security stack to Wang. Ex. 1002 ¶ 106. The upgrade would have improved Wang’s similarly and would have had a reasonable expectation of success by using Wang’s calls to modify a P/PoP’s security stack to implement a policy, and combining these known prior art elements according to their known functions would have yielded predictable results as Dr. Lee testifies. Id. ¶ 107. See KSR, 550 U.S. at 416.” slip op. at 35
Patent outcomesUS 10,826,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,826,941 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 7,020,667 - Bright Data Ltd. v. Oxylabs, UabInstitution deniedPTAB · Apr 2, 2024 · IPR2023-01441 · APJ Stacey G White · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny institution of inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“persuasive. As both parties note, the phrase in question recites “creating” a second data miner, which requires the generation of a new data miner. Petitioner’s declarant testifies that during prosecution of the ’526 patent prior art references were “expressly distinguished” because the prior art merely “pick[ed] a pre-existing search engine” or fell short because “no new miners [were] created.” Ex. 1008 ¶ 49 (citing Ex. 1002, 83, 34); accord Ex. 2001 ¶ 57 (similar testimony from Patent Owner’s declarant). We agree with the parties that this phrase requires the generation of a new data miner. Patent Owner argues that Petitioner’s construction falls short because it does not properly address the requirement that the second data miner be created “in response to the customer request.” Patent Owner states, and we agree, that “provid[ing] customized results to the user based on the customized parameters of the user search request” does not address the requirement that the second data miner be created “in response to” a customer request. Prelim. Resp. 9. In support of Patent Owner’s assertions, Patent Owner’s declarant points out that “as described with reference to FIG. 2 of the ’526 Patent, ‘customer requests for information can be received’ at block 66 and then at block 68, [‘]additional low level miners can be written in response, or high level miners, if required and not yet written, can be created.’” Ex. 2001 ¶ 61 (citing Ex. 1001, 8:32–35) (emphasis added). As stated in the ’526 patent a “‘miner’ or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66. The ’526 patent further notes that “the data miners are modular components that have specific input and output specifications.” Id. at 6:25–26. Further, “[m]iners are specified in terms of the data, usually as indicated by the below-described keys, that must be available when they start, and the data (including other keys) that they will create during successful processing.” Id. at 6:36–40. Thus, our review of the intrinsic record persuades us that creation of a second data miner requires the creation of a new “analysis engine,” and not just the provision of customized parameters to an existing “analysis engine.” Therefore, for the purposes of this decision, we construe the phrase “creating at least a second data miner in response to the customer request for information,” to require (1) the creation of at least one new second data miner, (2) that this creation be done in response to a customer request.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)
“As to the first argument, we agree with Patent Owner that Petitioner has not shown sufficiently that Jacobsen’s site ranking is created in response to a user request. Jacobsen’s site ranking feature “analyzes the Internet (i.e., the sites found) to determine the degree to which sites have been found interesting by others in the desired context/profession.” Ex. 1003 ¶ 67. A word score is saved for each word on each page (i.e., except for stop words, as discussed above). When a user enters a query, the inventive SSSE determines a set of (relevant) pages that contain the query terms. For each page, the word scores are summed for the words of the query to compute a site ranking for that page. The site rankings for the pages are then used in determining how to display the search results to the user. Id. ¶ 69. Based on our review of Jacobsen’s disclosures, we are persuaded that the query is an input to the site ranking feature. As described in the ’526 specification, a “‘miner’' or ‘data mining element’ is . . . an analysis engine that generates an output, and specifically an output that can include one or more keys representing characteristics of an entity, using a set of rules.” Ex. 1001, 5:63–66 (emphasis added). Site ranking in Jacobsen is performed after a user query, but on the record before us, Petitioner has not shown that the analysis engine used to rank the sites is not created “in response to” the user query. See also Pet. 14 n. 7 (stating that Jacobsen discloses “the use of a pre-existing template to search the results of a first data miner”). In addition, Petitioner has not shown sufficiently that the site ranking feature in Jacobsen would disclose a data miner as recited in the claims. The ’526 patent describes prior art systems that “generat[ed] an inverted index of words that occur on Web pages.” Ex. 1001, 1:22–23. User queries were provided with output based on that index and the results “returned are usually ranked by relevance using e.g., link information or key word frequency of occurrence.” Id. at 1:29–31. Petitioner’s declarant describes these disclosures are applicant admitted prior art. Ex. 1008 ¶ 52. The ’526 patent criticizes this prior method as inefficient because, despite the ranking “finding particular types of information typically entails a great deal of mundane sifting through query results by a person” and this process is “labor-intensive and mundane,” ranking “can consume an excessive’ amount of time.” Ex. 1001, 1:31–35, 1:42–43, 2:5–6. In contrast, the ’526 patent’s system purportedly “integrates the knowledge of many experts to sift through a large corpus of data to respond to what might be relatively complex requests for information.” Id. at 3:9–11. Its data miners are analysis engines that operate based on expert rules. Id. at code (57), 5:63– 66. Petitioner’s allegations have not persuaded us that Jacobsen’s site ranking feature overcomes the problems of the prior art ranking system. Accordingly, based on the record before us, we determine that” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success
“E. Alleged Obviousness of Claims 2 and 35 Over Jacobsen, and Over Jacobsen and Jaramillo, and Alleged Obviousness of Claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 Over Jacobsen and Hegli Petitioner asserts that dependent claims 2 and 35 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen, and as obvious over Jacobsen and Jaramillo. Pet. 4, 32–38. Petitioner also asserts that dependent claims 6–9, 11, 16, 17, 39–42, 44, 49, and 50 are unpatentable under 35 U.S.C. § 103(a) as obvious over Jacobsen and Hegli. Pet. 4, 38–50. Petitioner’s assertions here rely on the same disclosures from Jacobsen regarding the above discussed independent claims and do not remedy the above noted deficiency. As such, on the record before us, we are not persuaded by Petitioner’s Jacobsen-based challenges to claims 2, 6–9, 11, 16, 17, 35, 39–42, 44, 49, and 50. F. Alleged Anticipation of Claims 1, 6, 9, 11, 13, 19, 20, 34, 39, 42, 44, 46,” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,010,526 - PTAB · Mar 20, 2024 · IPR2023-01373 · APJ Carl W Whitehead Jr · IPR · Institution
The Board instituted review of claims 1–8 and 13–22 on the asserted § 103 ground over Bigbee and Nguyen after finding a reasonable likelihood of prevailing on claim 19.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science, Computer Engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault tolerant computer architecture design.” Pet. 1 (citing Ex. 1002 ¶ 29). Petitioner further asserts that “[a]dditional education could substitute for professional experience and vice versa.” Id. (citing Ex. 1002 ¶ 29).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner contends that the terms ‘“detection of loss of lockstep’ and ‘detecting loss of lockstep’ should be construed to include both mismatch errors and errors that may eventually result in mismatch errors.” Pet. 17 (citing Ex. 1001, 4:56–67). In other words, Petitioner contends the terms include “a ‘precursor to lockstep mismatch,’” i.e., “detecting an error that may eventually cause a lockstep mismatch error.” Id. (citing Ex. 1001, 4:56–67). Petitioner contends the “specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:26–59, 4:37–67). Petitioner contends the specification states that “[l]ockstep mismatch is one way of detecting an LOL [between the master processor 12A and slave processor 12B].” Id. (citing Ex. 1001, 4:56–57). Petitioner contends the specification “is consistent with the dependent claims, which expressly define detecting loss of lockstep as either of the two options.” Id. at 18 (citing Ex. 1001, 15:7–19, 30–49 (claims 1, 4–8)). Petitioner contends that the terms ‘“lockstep is recoverable’ and ‘loss of lockstep is recoverable’ should be construed as ‘lockstep is recoverable from the detected loss of lockstep’ because the specification only describes lockstep recovery from the detected LOL—‘whether the detected LOL is a recoverable LOL.”’ Id. at 19 (citing Ex. 1001, 5:56–6:1). At this stage of the proceeding, Patent Owner does not challenge Petitioner’s position on these terms. See Prelim. Resp. 13. At this stage of the proceeding, only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ evidence and contentions, we do not observe a dispute over the meaning of these terms that is necessary to resolve at this stage. Accordingly, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Furthermore, on February 10, 2024, the Eastern District of Texas granted Foras Technologies Ltd., Kia Corp., and Kia America Inc.’s Joint Motion to Stay in that case. Ex. 1035, 1–2; Ex. 1036; see Reply 1–2. Therefore, because the trial in the district court litigation has been stayed, this factor weighs heavily against discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Biosystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,502,958 - Meta Platforms, Inc. v. Almondnet, Inc.All claims unpatentablePTAB · Mar 13, 2024 · IPR2022-01436 · APJ Lynne H Browne · IPR · Final written decision
Claims 11, 13–16, 19, and 20 are unpatentable: the Board found them obvious over the stated Rosenberg combinations, reaching neither Merriman ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’582 Patent “would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 12. (citing Ex. 1002 ¶¶ 10–14). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. Patent Owner does not challenge this definition of the level of skill. PO Resp. 5. For purposes of this Decision, we also adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “does not believe an express claim construction is necessary at this time for this IPR” and Patent Owner “agrees that claim construction is not necessary to resolve any issue . . . and that the plain and ordinary meaning of the claim language should be applied.” See Pet. 13 (citing Ex. 1002 ¶ 37); PO Resp. 6. We agree with the parties that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”). To the extent that the meaning of any claim term is addressed, we use its ordinary and customary meaning as discussed in our analysis below.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(5) Discussion of Limitation (b) We agree with Petitioner and find that Rosenberg meets limitation (b) under either theory advanced in the Petition and credit the testimony of Dr. Schmandt that Rosenberg discloses automatic URL redirection as required by this limitation. Ex. 1002 ¶ 117. During oral argument, Petitioner noted that “[t]he specific embodiment in Rosenberg [that] is being relied on which uses frame tags” discloses URL redirection and argued that “[t]he fact that you could bypass [URL redirection] with an edge case air scenario where maybe you can type a URL directly . . . doesn’t prevent [Rosenberg] from meeting the claim limitation.” Tr., 16:25–17:4. Even if we assume for both theories that Patent Owner is correct that Rosenberg discloses instances where the partial profile is received without URL redirection, that does not negate the fact that Rosenberg discloses instances wherein the partial profile is received as a result of automatic URL redirection. Ex. 1003, 5:36–38, 8:56–68. We agree with Petitioner that Rosenberg’s disclosure of such instances is sufficient to meet the requirements of limitation (b) because “prior art that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.” Hewlett-Packard Co., 340 F.3d at 1326.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner’s argument that Petitioner’s reasoning in support of its challenge only applies to two servers is undermined by Dr. Sherwood’s testimony that “a POSITA would seek to create a system that could have been scaled to an arbitrary number of servers, because Rosenberg, Zeff, and Sterne all teach the desirability of such scaling.” Ex. 2001 ¶ 59. Patent Owner’s argument also ignores the fact that Rosenberg repeatedly discloses that its method can be applied to multiple servers. See, e.g., Ex. 1003, 4:16– 19. Moreover, Patent Owner’s argument assumes that one of ordinary skill in the art would not have known how to implement Rosenberg’s method with more than one server. Such arguments are unconvincing, because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. (b) Alleged Additional Reasons Why Petitioner’s Reasoning Lacks Rational Underpinning Regarding Patent Owner’s contention that “the Petition’s ‘visible frame’ approach significantly increases visual clutter,” we agree with Petitioner that this argument does “nothing more than confirm the unremarkable fact that the frame tag embodiment, as with almost all user interface decisions, would have offered both benefits and trade-offs.” PO Resp. 26; Pet. Reply 10. We credit Dr. Schmandt’s testimony that “[a]n ordinarily skilled artisan would thus have been motivated, depending on the needs of the particular system, to employ the frame tag embodiment in Rosenberg to obtain benefits not offered by the other disclosed alternatives.” Ex. 1019 ¶ 23. We further credit Dr. Schmandt’s testimony that any “so-called increase in ‘visual clutter’ also results in an increase in the amount of usable information that can be displayed to the user within the browser window.” Id. ¶ 24.” slip op. at 37
Patent outcomesUS 8,244,582 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,244,582 - PTAB · Feb 13, 2024 · IPR2023-01333 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted obviousness grounds, finding a reasonable likelihood that Mercedes-Benz would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response. Paper 9. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) We therefore institute inter partes review as to all of the challenged claims of the ’080 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S.Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108 (a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Other 314aNot reached
“In this proceeding, Patent Owner has not requested that we exercise our discretion to deny institution under either § 314(a) or § 325(d). Therefore, we do not reach those issues here. In the ’567 IPR, Patent Owner argued that the petition there should be denied under § 325(d). ’567 IPR, Paper 12 at 10–22. In our Institution Decision in the ’567 IPR, we addressed that issue and, after analyzing Patent Owner’s arguments, we were not persuaded to exercise our discretion to deny institution under § 325(d). Id., Paper 13 at 13–19.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted, Patent Owner has expressly waived filing a preliminary response. Paper 9. At this stage, therefore, Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,049,080 - PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.
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) (2023). 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 contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - 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
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