- Finjan, Inc. v. Fireeye, Inc.Some claims unpatentablePTAB · Jul 10, 2015 · IPR2014-00344 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–4, 6–8, 19, 20, 22–25, and 27–29 are unpatentable under §103; claim 21 was not shown unpatentable because the Chen ground did not establish the replayer limitation.
RulingsFinal written decision- BurdenMixed
“determine Petitioner’s arguments are not persuasive. Although Chen discloses forwarding suspicious packets to a clone, Petitioner has not explained sufficiently how forwarding packets teaches or suggests “configuring a replayer to transmit . . . data to the virtual machine.” Moreover, Petitioner does not explain how Chen’s logging disclosure (Ex. 1009, 2–3) applies to configuring a replayer. At the oral hearing, Petitioner was asked to explain its reliance on Chen for this limitation.” slip op. at 31
- Skill levelSkill level board ownDecided for petitioner
“2. Level of Ordinary Skill in the Art The parties agree that a person of ordinary skill in the art would have the following education and/or experience: a recent degree in a field such as computer science or computer networking and two or more years of experience in the computer networking or computer security industry. PO Resp. 17; Ex. 1030 ¶ 33. “Alternatively, in lieu of recent formal education, a person of ordinary skill in the art would have had six or more years of relevant experience in the computer networking or computer security industry.” Id. This level of ordinary skill in the art is consistent with the ordinary skill reflected in the prior art of record, which is directed to computer networking and computer security systems. For example, Venezia and Kaeo both disclose intrusion-detection-systems. Ex. 1005; Ex. 1006. With this level of ordinary skill in mind, we now turn to the analysis” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. flag or flagging (Claims 1 and 19) For the purposes of our Decision to Institute, we determined that the broadest reasonable interpretation of the terms “flag” and “flagging” is “identify” and “identifying.” Dec. 7. Neither party disputes this interpretation. Pet. 5; PO Resp. 12. Based on the complete record now before us, we discern no reason to change the interpretation; thus, we adopt our previous analysis and interpret “flag” and “flagging” to mean “identify” and “identifying,” respectively.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Next, Patent Owner argues that Petitioner has not provided a reason for why a person of ordinary skill in the art would modify Venezia to (1) flag for replay and (2) include an analysis environment. PO Resp. 25– 26. Nonetheless, Petitioner has explained sufficiently how Venezia teaches both flagging for replay and an analysis environment. Thus, Petitioner does not rely on a modification of Venezia to disclose these features. Additionally, we are persuaded that Petitioner has provided sufficient rationale to combine the teachings of Kaeo and Venezia. Pet. 26. These rationales include combining Venezia’s replay features with Kaeo’s IDS to minimize false positives in Kaeo’s IDS through further verification of suspicious packets with Venezia’s replay. Id. Accordingly, based on the evidence and arguments presented, Petitioner has shown, by a preponderance of the evidence, supported by articulated reasoning with rational underpinning, that claims 1 and 19 would have been obvious over Kaeo and Venezia.” slip op. at 22
Patent outcomesUS 8,291,499 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,291,499 - QSC Audio Products, LLC v. Crest Audio, Inc.Some claims unpatentablePTAB · May 1, 2015 · IPR2014-00131 · APJ Bryan F Moore · IPR · Final written decision
Claims 1–15, 18, 19, 21, and 24–26 are unpatentable under § 103; claims 20 and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We determine the obviousness issues guided by the evidence of the level of ordinary skill in the art presented by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). From the Porambo reference, which Patent Owner does not contest is in the field of endeavor of the invention in question, we understand that the level of ordinary skill in the art, at a minimum, pertains to audio amplifiers and the incorporation of DSPs in audio amplifiers. See Ex. 1006, Abstract (describing the features of the audio amplifiers and DSPs at issue in Porambo).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for patent owner
“As to his audio amplifier experience, Dr. Ellis completed a Master of Science degree in Electrical Engineering with numerous years of experience as a research assistant researching audio signal processing, sound synthesis and analysis. Ex. 1004, 1. Dr. Ellis stated during his deposition that, although he is an expert in digital signal processing (IPR2014-00129, Ex. 2002, 154:15–16), he has experience in the design of amplifiers from his undergraduate education. Id. at 124:7–20. Dr. Ellis designed and tested microphone amplifiers as a post-doctoral student at the Computer Science Institute at Berkeley, id. at 111:13–113:4, and currently is designing amplifiers that can drive speakers with the goal of incorporating these into his professional work. Id. at 120:4–121:12. We also note, as discussed above, the field of the ’544 Patent invention is related to audio amplifiers generally and the incorporation of DSPs. We find that although Dr. Ellis is less experienced than Mr. Cordell in the area of amplifier design, he is qualified sufficiently to testify about audio amplifiers as they relate to DSPs. Patent Owner also argues that Dr. Ellis must himself be a person of ordinary skill in the art. PO Resp. 15–16. Patent Owner’s arguments are unpersuasive, because, to testify as an expert under FRE 702, a person need not be a person of ordinary skill in the art, but rather “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); see SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010); Mytee Prods., Inc. v. Harris Research, Inc., 439 Fed. App’x 882, 886–87 (Fed. Cir. 2011) (non-precedential) (upholding admission of the testimony of an expert who “had experience relevant to the field of the invention,” despite admission that he was not a person of ordinary skill in the art). As noted above, Dr. Ellis is qualified in the pertinent art. Finally, Patent Owner argues that Dr. Ellis spent an unreasonably short amount of time reviewing this case before providing his opinion, i.e., only ten hours. PO Resp. 17–18. We find that the amount of time Dr. Ellis chose to spend with the case likely is based on his experience with the subject matter and the difficulty of the subject matter. Thus, we are not persuaded by Patent Owner’s argument that the time spent on the proffered opinion affects the weight we give his opinions.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“signal processing function programs and program data for defining function parameters.” Ex. 1001, 6:43–45. Thus, the Specification suggests that both the functions and parameters are transmitted to the DSP. Additionally, the Federal Circuit, when faced with similar claim language, determined that the phrase “at least one” followed by a list of categories separated by “and” rather than “or” suggests a conjunctive list in which each one of the members of the list is necessary to satisfy the claim. SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 885–86 (Fed. Cir. 2004) (“A common treatise on grammar teaches that ‘an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.’” (quoting William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000)). SuperGuide points out that each term in the list embraces a different category, each of which must take on a chosen value: “Every disclosed embodiment teaches that the user must choose a value for each designated category.” Id. at 887. That is the case here where functions have associated parameters. For the above reasons, consistent with the plain English meaning and the Specification, we construe “at least one of a signal processing function and a signal processing function parameter” to require that both a signal processing function and a signal processing parameter must be present in the prior art to meet that claim limitation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner does not assert that a removable connection itself is incompatible with Sudo. Rather Patent Owner asserts that the specific connections used by Krokstad are incompatible with Sudo. See PO Resp. 36. Patent Owner misses the point. The obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) The Supreme Court has made clear that we apply “an expansive and flexible approach” to the question of obviousness. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. Id. at 418. As the Supreme Court recognized, in many cases a person of ordinary skill “will be able to fit the teachings of multiple patents together like pieces of a puzzle,” recognizing that a person of ordinary skill “is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. Both parties’ declarants agree that Sudo’s high-speed connection could be implemented using a PCI bus, which is a removable connection. Ex. 2002, 178:10–17; Ex. 1012, 93:1–94:19. Thus, given the motivation to create a removable connection, such as the one disclosed in Krokstad, we are persuaded that implementation of that connection in Sudo would not render it unsuitable for its intended purpose. Thus, for the reasons stated above, Petitioner has shown by a” slip op. at 14
Patent outcomesUS 5,652,544 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 5,652,544 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 3, 2015 · IPR2013-00562 · APJ Scott A Daniels · IPR · Final written decision
Claims 31, 41, and 42 are unpatentable: claim 31 is anticipated by Chang, and claims 41 and 42 are obvious over Chang with Webb and Chang with Horn, respectively.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. and Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the other portions of the ’604 patent specification that Enfish identifies.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that adopting Enfish’s proposed construction without further context would create ambiguity. Additionally, limitations are not to be read into the claims from embodiments in the specification. See In re Van Geuns, 988 F.2d 1181 at 1184. Furthermore, we agree with Microsoft that Enfish relies on insufficient extrinsic evidence for support, for example, that an OID is “immutable.” We also note that Enfish’s contentions are not commensurate with the scope of the claims because each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not recite using an OID to retrieve data from memory. We, therefore, determine that the construction of “OID” in the Decision to Institute should not be changed.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“We give little weight to Dr. Hosking’s testimony with respect to the limitations in claim 34 because he does not provide an explanation or evidence as to why Dickerson’s synchronization of data in the same column across separate databases teaches reciprocal synchronization between columns in the same table. Dr. Hosking states that a person of skill in the art would be motivated to combine Chang and “the synchronization concept as taught in Dickerson in the case that similar elements were to be reciprocally synchronized.” Ex. 1022 ¶ 225. The premise of this argument is the assumption that Dickerson’s synchronization across separate databases is the same as synchronizing two logical columns reciprocally in the same database table. Dr. Hosking does not provide support for this assumption. This argument, therefore, does not sufficiently explain why mirroring data across separate databases leads to data synchronization between logical columns in the same table. Dr. Hosking’s testimony does not explain why, or how, one of ordinary skill in the art would use the database management disclosed by Chang in cooperation with the linked database elements between separate databases to achieve reciprocal synchronization “to achieve such coordination of the data” between logical columns in the same table. See id. at ¶¶ 283–294.” slip op. at 41
- Skill levelOther
Patent outcomesUS 6,151,604 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,151,604 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00561 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46 and 54 were held unpatentable; claims 55, 56, and 60 were not shown unpatentable; claims 16, 24–26, and 30 were terminated because their means-plus-function limitation lacked sufficient disclosed structure.
RulingsFinal written decision- BurdenMixed
“Microsoft has shown by a preponderance of the evidence that claims 46 and 54 of the ’775 patent are unpatentable. Microsoft has not shown that claims 55, 56, and 60 of the ’775 patent are unpatentable. For the reasons discussed below, we are unable to reach a determination on the alleged grounds of unpatentability over prior art for claims 16, 24–26 and 30. Accordingly, we terminate this proceeding with respect to claims 16, 24–26 and 30 under 37 C.F.R. § 42.72.” slip op. at 3
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’775 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’775 patent specification that Enfish identifies.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 29. Additionally, claims 46 and 54 recite that an OID is included “to identify” each attribute set and each record, but do not specifically recite using an OID to retrieve data from memory.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“80, PG 453, 471, 481, 482, 484, Ex. 1219 ¶¶ 67–93, 119–131). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1204, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each record and each attribute set including an OID, as recited in claim 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1204, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1204, LR 276; see also id. at PF 37, 38, PG 482. Visual Basic also discloses a cell pointing to an index object. Id. at LR 280, PG 484.” slip op. at 17
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00560 · APJ Barbara A Parvis · IPR · Final written decision
Claims 47–48 are unpatentable as anticipated by Visual Basic, and claims 49–50 as obvious over Visual Basic and Jensen; claims 51–53 were not shown unpatentable, and claims 17–23 were terminated.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 15. We evaluate Enfish’s contention below. Enfish also provides a proposed construction for “anchor,” recited in claims 21 and 51. PO Resp. 22. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of this term for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table,” “object identification number,” and “attribute set.”” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“evidence, and the detailed claim analysis, which reads persuasively all elements of claim 47 onto the disclosure of Visual Basic. Pet. 33–46 (citing Ex. 1104, LR 162, 185, 280, 425, 484, 532, 558, PF 1, 3, 18, 37–39, 40, 47, 76, 80, PG 453, 471, 481, 482 ; Ex. 1119 ¶¶ 67–98). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claim 47. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“2007 ¶ 231. In contrast to Dr. Jagadish’s statement, however, Jensen teaches an object-oriented application for managing information retrieved from a structured database, such as a relational database. Ex. 1106, Abstract. Enfish further contends that Microsoft does not explain why one of ordinary skill in the art would have been motivated to apply the pointers of Jensen to the indexing structure in Visual Basic. PO Resp. 35. We, however, are persuaded that Microsoft has shown a sufficiently articulated reason with rational underpinning to support obviousness (Pet. 48–49 (citing Ex. 1119 ¶¶ 387–404)). Microsoft, for example, states “[i]t was well known in the art at the time that indexes such as the index disclosed in [Visual Basic], maintain object identification numbers of the cell for locating data.” Pet. 49 (emphasis added). Microsoft continues, “Jensen discloses containing the address in a pointer, e.g., a physical memory address (i.e., OIDs).” Id. (citing Ex. 1106, 7:29–35). Dr. Hosking testifies “[i]t was well known in the art at the time that Index Objects locate data by maintaining object identification numbers in the internal pointers as disclosed in Jensen.” Ex. 1119 ¶ 403 (emphasis added). Dr. Hosking further testifies “[a] person of ordinary skill in the art would be motivated to combine Jensen’s teaching of maintaining the OIDs in a pointer with [Visual Basic’s] disclosure of identifying the logical columns / rows with the OIDs.” Ex. 1119 ¶ 404. The predictable use of familiar prior art elements according to their established functions renders the recited invention obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).” slip op. at 19
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“invention, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that the claimed invention would not have been obvious to one with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). However, to accord substantial weight to objective evidence requires the finding of a nexus between the evidence and the merits of the claimed invention. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention.”). Enfish contends that the claimed invention received industry accolades, including praise from Microsoft, satisfied a long-felt need, resulted in success where others had failed, as well as commercial success. PO Resp. 42–47. Enfish points to features of claim 17, which Enfish contends are the features of the claimed invention that resulted in the objective indicia of success to which Enfish refers. Id. at 43–44. Claim 17 of the ’775 patent, however, is challenged on the basis that it is anticipated by Visual Basic. Secondary considerations do not weigh into determinations regarding anticipation. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008). Because we conclude that Microsoft has not shown that claims 51–53 of the ’775 patent are unpatentable for other reasons, the only claims that we need to evaluate are dependent claims 49 and 50 of the ’775 patent. Microsoft asserts that claims 49 and 50 are obvious over the combination of Visual Basic with a reference that teaches referencing objects through two-way pointers. Pet. 49 (citing Ex. 1106, 7:29–35). Enfish has not shown a nexus between any of the accolades or successes it says occurred and the use of two-way pointers.” slip op. at 24
Patent outcomesUS 6,163,775 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,163,775 - Microsoft Corporation v. Enfish, LLCSome claims unpatentablePTAB · Mar 2, 2015 · IPR2013-00563 · APJ Barbara A Parvis · IPR · Final written decision
Claims 46–50 and 54 are unpatentable: claims 47, 48, and 54 as anticipated by Visual Basic; claim 46 as obvious over SQL-92 and Chawathe; claims 49 and 50 as obvious over Visual Basic and Jensen.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“[T]he corresponding structure for a § 112 ¶ 6 claim for a computer- implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Additionally, specific portions of the specification must clearly link or associate a computer program or algorithm to the function corresponding to the claimed means. See Medical Inst. & Diag. Corp. v. Elektra AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003). For the reasons set forth below, we conclude that the four steps and other ’604 patent specification portions identified by Enfish do not describe an algorithm for the recited function of “configuring memory according to a logical table.” We further conclude that Enfish has not clearly linked or associated the recited function to the four steps or the portions of the ’604 patent specification that Enfish identifies. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Enfish contends that our construction for “object identification number” is incomplete. PO Resp. 16. We evaluate Enfish’s contention below. Enfish also provides contentions regarding two other terms: “anchor,” recited in claims 21 and 51, and “external documents,” recited in claims 30 and 60. PO Resp. 23. Because we determine that Microsoft has not met its burden with respect to these claims for other reasons, no construction of these terms for the purposes of this Decision is necessary. We discern no reason, based on the complete record now before us, to change our constructions in the Decision to Institute of “logical table” and “object identification number.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We determine that Enfish’s proposed construction of OID introduces requirements beyond what is needed for an OID to identify data and retrieve data from memory. Enfish, for example, contends that “an OID is unique among all rows and columns of the logical table.” PO Resp. 32. Additionally, each of the independent claims recites that an OID is included “to identify” each logical row and each logical column, but does not specifically recite using an OID to retrieve data from memory.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Pet. 31–43 (citing Ex. 1104, LR 162, 185, 276, 277, 280, 532, 425, 558, PF 1, 3, 18, 37–40, 47, 76, 80, PG 471, 481, 482, 484; Ex. 1119 ¶¶ 68–93, 119). For example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses configuring memory according to a logical table, as recited in claims 47 and 54. In the cited portions above, Visual Basic discloses storing data in a computer formatted as a table object, which is “a logical representation of a physical table.” Ex. 1104, LR 558. The table object comprises “records (rows) and fields (columns).” Id. As an additional example, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses each row and each column including an OID, as recited in claims 47 and 54. In the cited portions above, Visual Basic describes assigning a primary key and that “[a] table’s primary key is the determining factor when testing to see if the record is unique within the table.” Ex. 1104, PF 39. According to Visual Basic “[Visual Basic] creates an index on the primary key of the table and uses it to find records and to create joins between tables.” Id. Regarding each column including an OID, according to Visual Basic, “[e]ach Field in the Fields collection of a TableDef has a unique value in the OrdinalPosition property.” Id. at LR 425. Furthermore, we are persuaded that Microsoft has shown by a preponderance of the evidence that Visual Basic discloses indexing data stored in the table, as recited in claims 47 and 54, and a cell including a pointer to an index record, as recited in claim 54. In the cited portions above, Visual Basic discloses an index object used for creating indexes to “speed up the process of finding records.” Ex. 1104, LR 276–277; see also” slip op. at 18
Patent outcomesUS 6,151,604 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 6,151,604 - Respironics, Inc. v. Zoll Medical CorporationSome claims unpatentablePTAB · Sep 17, 2014 · IPR2013-00322 · APJ Scott E Kamholz · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Owen; claims 2, 4, 5, 8, 9, 16, 19, and 20 were not shown unpatentable. The contingent motion to amend was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“cite numerous passages in the ’003 patent, none of these passages serves to define “patient compliance [and use] data” in a manner that justifies disregarding that term. Although the ’003 patent does describe patient compliance data as relating to whether the patient is using the device improperly, or at all (Ex. 1001, 5:49-52), it is used within the context of assessing whether the patient is following (i.e., complying with) instructions. To construe the terms as encompassing any data related to patient use is, therefore, unreasonably broad.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“A limitation using the term “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.1 Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). When construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, we first must identify the claimed function, and then we look to the specification to identify the corresponding structure that performs the claimed function. Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). With respect to the second step, “structure disclosed in the specification is ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Golight, Inc. v. Wal-Mart Stores Inc., 355 F.3d 1327, 1334 (Fed. Cir. 2004) (citations and quotation marks omitted).” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“We focus our analysis on the “means for monitoring and storing” limitation in claims 4 and 19. Claim 4 recites: “means for monitoring and storing operations information of the medical device and patient compliance and use data.” Claim 19 recites: “means for monitoring and storing patient medical parameters, device performance data and patient compliance data.” Respironics argues that the structures disclosed in the ’003 patent as performing the “monitoring” and “storing” functions are a medical device and a memory. Pet. 8. Zoll does not contest this structural correspondence. We maintain our determination that these limitations invoke 35 U.S.C. § 112 ¶ 6, and that the structures corresponding to each of these limitations are a medical device and a memory. We have considered the parties’ arguments and evidence concerning” slip op. at 8
Patent outcomesUS 6,681,003 mixedClaim construction§ 102 anticipationPatents in suitUS 6,681,003
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.