• I4f Licensing NV v. Vilox ABInstitution denied
  PTAB · Aug 21, 2024 · IPR2024-00602 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were anticipated by Miller or obvious over Miller alone or Miller and Roy.

  RulingsInstitution decision

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

    “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). For the reasons explained below, we do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Considering all of the arguments and evidence, we agree with Patent Owner that Petitioner insufficiently supports its position that Miller discloses a locking recess with a curved horizontal locking surface. Petitioner does not cite any text in Miller that discloses a locking recess with a curved horizontal locking surface. E.g., Pet. 7–8, 14–23. Instead, Petitioner relies on Miller’s Figure 3 as allegedly showing a curved horizontal locking surface. E.g., id. at 15–18, 21–23. We do not find that Miller’s Figure 3 shows a locking recess with a curved horizontal locking surface in the location identified by Petitioner, i.e., the location of the curved red arrow that Petitioner added to Miller’s Figure 3. E.g., Pet. 15, 22. Even assuming that this portion of Miller’s drawing shows a very subtle rise (which we do not find), it does not show clearly a curve, as opposed to, for example, a slightly inclined flat surface. Moreover, we agree with Patent Owner that, at the point of Petitioner’s curved red arrow, Figure 3’s overlapping representation of the tongue’s lower surface and the groove’s upper surface prevents distinguishing one from the other. Prelim. Resp. 45 (“In Figure 3, the lines merge so that no conclusion can reasonably be made by a [person of ordinary skill in the art] as to whether a locking recess is present in the groove or not.”). Accordingly, Figure 3 does not allow discerning a curve in the groove’s upper surface at the point identified by Petitioner.” slip op. at 17

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

    “Additionally, Petitioner does not provide a persuasive reason that a person of ordinary skill in the art would have had to configure Miller’s panel with a curved horizontal locking surface, in addition to an inclined horizontal locking surface, as required by independent claim 1. Pet. 34–39; Prelim. Resp. 54. In support of its argument that it was well-known to use curved locking surfaces, Petitioner provides a vague string cite of evidence that dubiously includes Miller (which has not been shown to disclose a curved horizontal locking surface). Pet. 37 (citing Ex. 1002 ¶¶ 25–26, 56; Ex. 1006, Figs. 2–4, 9, and 10 and associated description; Ex. 1004; Ex. 1006; Ex. 1005; Ex. 1009; Ex. 1010; Ex. 1011; Ex. 1012; Ex. 1013; Ex. 1014). Moreover, to the extent Petitioner is correct that it was well-known and easy to configure a panel with a curved locking surface, that may show that a person of ordinary skill in the art could have added a curved horizontal locking surface to Miller’s panel. But that does not show sufficiently that such a modification would have been obvious, as it does not demonstrate why a person of ordinary skill in the art would have modified Miller’s cladding panel to add a curved horizontal locking surface. See Belden v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (stating that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (citing InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d 1327, 1351–1352 (Fed. Cir. 2014)). Additionally, to the extent that Petitioner is correct that a person of ordinary skill in the art would have recognized a strength benefit of having two locking recesses, that does not explain why a person of ordinary skill in the art would have added a curved locking surface, as opposed to, for example, another substantially planar locking surface like the one at Miller’s contact point 42. Pet. 36–39; Ex. 1004, 5:19–34. And Petitioner does not identify, much less substantiate, any other reason that a person of ordinary skill in the art would have had for combining a curved locking surface with an inclined horizontal locking surface in Miller’s cladding panel. Pet. 36–39. Because Petitioner has not persuasively addressed claim 1’s requirement that its dual locking recesses include one with a curved horizontal locking surface, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious over Miller. E.g., Pet. 7–8, 34–39. Additionally, this deficiency is not remedied in Petitioner’s challenges to dependent claims 2–15 based on Miller. E.g., Pet. 34, 40–50. Accordingly, Petitioner does not establish a reasonable likelihood of prevailing on its position that dependent claims 2–15 would have been obvious over Miller.” slip op. at 23

  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,421,425
• Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution denied
  PTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.

  RulingsInstitution decision

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

    “which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4

  • PTAB / AIA Trials › Discretionary denialNot reached

    “Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11

  Claim constructionDiscretionary denial
  Patents in suitUS 6,845,128
• Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.Institution denied
  PTAB · Feb 12, 2024 · IPR2023-01348 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 2, 3, 5–15, 17, and 19–21 would have been obvious over Peev and Spitballs.

  RulingsInstitution decision

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

    “For all of these reasons, and after our review of Petitioner’s assertions and the supporting evidence, we determine that Petitioner has not supported sufficiently its assertion that it would have been obvious to combine Peev and Spitballs. Thus, Petitioner does not show sufficiently that any of challenged claims 2, 3, 5–15, 17, and 19–21 would have been obvious over the combination of Peev and Spitballs, as alleged. Accordingly, Petitioner fails to demonstrate a reasonable likelihood of establishing unpatentability of any of the challenged claims. III. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the’282 patent, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

  • Skill levelSkill level patent owner adoptedOther

    “Characterizing the definitions of the level of ordinary skill in the art that were proposed in the ITC proceeding as “similar” and noting the ITC ALJ’s determination that “all of the proposals are appropriate,” Petitioner does not argue for the application of any particular level of skill in the art in this proceeding. Pet. 20 (citing Ex. 1015, 8). We too find the definitions advanced in the ITC proceeding similar. Indeed, any differences between the definitions do not rise to a level that would affect our analysis of whether the Petition and associated evidence are sufficiently persuasive for purposes of institution. In our view, the foregoing level of ordinary skill in the art proposed by Patent Owner in the ITC proceeding best fits the legal requirements. Accordingly, we adopt and apply that level of ordinary skill in the art in our analysis of the merits.” slip op. at 8

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

    “With respect to claim construction, the Petition notes the constructions of certain claim terms adopted by the ALJ in the ITC proceeding. Pet. 20–21 (citing Ex. 1015, 12, 14, 19, 23). The Petition does not propose a construction of any claim language for this proceeding. Id. Nor does the Preliminary Response propose a construction of any claim language for this proceeding. See generally, Prelim. Resp. The parties’ arguments and evidence do not raise any issues that necessitate an express claim construction in order to determine whether Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one of the challenged claims. Accordingly, we need not and do not expressly construe any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing 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 successMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. Though there is a risk of injury while using airsoft guns, Petitioner has not established that one of skill in the art would consider this risk a problem with airsoft guns, as opposed to an accepted function. Prelim. Resp. 27–30. Petitioner’s own declarant, Mr. Delman, testified that he regularly modifies “toy projectile launchers, including for example Nerf blasters” to make them more powerful to “improve the firing qualities – power and accuracy” for use by his sons. Ex. 1016 ¶ 20. Thus, Petitioner’s declarant, like Peev, is also concerned with making toy guns more like a real gun. See id.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,371,282
• Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.Institution denied
  PTAB · Feb 12, 2024 · IPR2023-01461 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 13, and 15–20 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the Preliminary Response and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2

  • Skill levelSkill level patent owner adoptedOther

    “We agree that the three definitions are similar. We further do not see either party advocating for any particular definition, or that any distinction between the definitions is material to institution. As such, we do not repeat all three definitions and accept Patent Owner’s definition as most closely fitting the legal requirements: a bachelor’s degree in mechanical engineering, industrial design, or equivalent, with at least one year of relevant experience designing projectile launching systems but would also be a member of a team, which would include a person with a bachelor’s in materials science, chemistry, or equivalent (e.g., chemical engineering), or has at least one year experience working with materials for use in consumer products equivalent work experience may substitute for educational experience, and vice versa Pet. 21–22 (quoting Ex. 1015, 7–8); see also Ex. 1016 ¶ 55 (stating that “Patent Owner’s and Petitioner’s definitions of the [person of ordinary skill in the art] are similar, and my opinions in this Declaration would not change if I used Patent Owner’s definition of the [person of ordinary skill in the art] rather than Petitioner’s definition”).” slip op. at 7

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

    “We determine that no terms require express construction to determine whether Petitioner would prevail in establishing that at least one of the challenged claims would have been anticipated or obvious over the prior art. 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

    “For the reasons above, Petitioner presents insufficient evidence that one of ordinary skill in the art would consider the injury risk associated with Peev’s airsoft gun a problem, that the use of SAP would decrease the risk of injury, and that the muzzle velocity of Peev’s airsoft gun is sufficient to cause injury. See Pet. 34–39. The arguments in the Petition substantially repeat the relevant testimonial evidence that does not cite to any additional evidence in the record. Compare id. at 34–40, with Ex. 1016 ¶¶ 75–79; see also id. ¶¶ 56–72 (opining on Peev’s and Spitballs’s disclosures). Therefore, insufficient evidence supports Petitioner’s asserted reason to combine Peev and Spitballs. We further agree with Patent Owner that merely arguing that references are in the same field of endeavor is insufficient to explain why the references would have been combined. Pet. 39–40; Prelim. Resp. 18–19; Ex. 1016 ¶ 80. We additionally agree with Patent Owner that insufficient evidence supports Petitioner’s argument that the proposed combination represents a simple substitution of known elements. Pet. 40; Prelim. Resp. 20; Ex. 1016 ¶ 81. As discussed above, insufficient evidence supports Petitioner’s assertion that spherical hydrated SAP was a known ammunition for airsoft guns like Peev’s, that is an “element . . . known in the field” (KSR, 550 U.S. at 416). For all of these reasons, and after our review of Petitioner’s assertions and the supporting evidence, we determine that Petitioner has not established a reasonable likelihood of prevailing in showing that claim 13 is obvious in view of Peev and Spitballs.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,596,255
• Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.Institution denied
  PTAB · Feb 12, 2024 · IPR2023-01339 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 4–9, 12, and 14 were obvious over Peev and Spitballs.

  RulingsInstitution decision

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

    “For all of these reasons, and after our review of Petitioner’s assertions and the supporting evidence, we determine that Petitioner has not established a reasonable likelihood of prevailing in showing that claim 1 is obvious in view of Peev and Spitballs. 3. Claims 4–9, 12, 14 Petitioner argues that the combination of Peev and Spitballs renders obvious claims 4–9, 12, and 14. Pet. 45–53, 55–56. Patent Owner does not address the dependent claims. Having determined that Petitioner has not met its burden for institution with respect to claim 1, the Petition likewise has not met its burden with respect to the dependent claims.” slip op. at 13

  • Skill levelSkill level patent owner adoptedOther

    “We agree that the three definitions are similar. We further do not see either party advocating for any particular definition, or that any distinction between the definitions is material to institution. As such, we do not repeat all three definitions and accept Patent Owner’s definition as most closely fitting the legal requirements: a bachelor’s degree in mechanical engineering, industrial design, or equivalent, with at least one year of relevant experience designing projectile launching systems but would also be a member of a team, which would include a person with a bachelor’s in materials science, chemistry, or equivalent (e.g., chemical engineering), or has at least one year experience working with materials for use in consumer products equivalent work experience may substitute for educational experience, and vice versa Pet. 19 (quoting Ex. 1015, 8).” slip op. at 6

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

    “Neither Petitioner or Patent Owner advocate for the construction of any particular claim term. Pet. 20–21; see generally Prelim. Resp. We determine that no terms require express construction at this stage. 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)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. Though there is a risk of injury while using airsoft guns, Petitioner has not established that one of skill in the art would consider this risk a problem with airsoft guns, as opposed to an accepted function. Prelim. Resp. 27–30. Petitioner’s own declarant, Mr. Delman, testified that he regularly modifies “toy projectile launchers, including for example Nerf blasters” to make them more powerful to “improve the firing qualities – power and accuracy” for use by his sons. Ex. 1016 ¶ 20. Thus, Petitioner’s declarant, like Peev, is also concerned with making toy guns more like a real gun.” slip op. at 11

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,640,683
• Trend Micro, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Dec 1, 2023 · IPR2023-00800 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Trend Micro did not show a reasonable likelihood that claims 1–5 were unpatentable over Mukherjee and Cooper.

  RulingsInstitution decision

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

    “Having reviewed all of the parties’ arguments and evidence, we determine Petitioner does not demonstrate a reasonable likelihood of establishing unpatentability of any of claims 1–5. For the following reasons, Petitioner does not address persuasively claim 1’s recitation of “the native computing environment which includes a network analyzer, an integrity processor, an event correlation matrix, a risk correlation matrix, and a trust supervisor.” Ex. 1001, 40:1–4 (emphasis added).” slip op. at 12

  • BurdenNot reached

    “We agree with Patent Owner that Petitioner does not support sufficiently its position that Mukherjee discloses claim 1’s “event correlation matrix” and “risk correlation matrix.” Pet. 45–46. For example, when addressing the claimed “event correlation matrix,” Petitioner does not substantiate its position that Mukherjee describes “operation of the fourth layer of the expert model as mapping events to security issues.” Pet. 46 identify any express disclosure of Mukherjee mapping events to security issues in its fourth layer. Ex. 1005, 13; Pet. 45–46.” slip op. at 13

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

    “We agree with Patent Owner that Petitioner does not support sufficiently its position that Mukherjee discloses claim 1’s “event correlation matrix” and “risk correlation matrix.” Pet. 45–46. For example, when addressing the claimed “event correlation matrix,” Petitioner does not substantiate its position that Mukherjee describes “operation of the fourth layer of the expert model as mapping events to security issues.” Pet. 46 identify any express disclosure of Mukherjee mapping events to security issues in its fourth layer. Ex. 1005, 13; Pet. 45–46.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner and Dr. Nielson do not show persuasively how or why Mukherjee’s discussion of performing these other actions discloses mapping events to security issues. Pet. 45–46; Ex. 1003 ¶¶ 187–188. For example, Dr. Nielson’s testimony that “[a person of ordinary skill in the art] would have known that ‘attack signatures,’ in the context of IDS, refers to patterns of behavior known to be related to attacks” does not provide sufficiently objective or logical support for his conclusion that “Mukherjee discloses ‘mapping integrity warnings to endpoint events.’” Ex. 1003 ¶ 188. Nor does Dr. Nielson’s other testimony. Id. ¶¶ 187–188.” slip op. at 14

  § 103 obviousnesscites Phillips
  Patents in suitUS 8,990,948
• Trend Micro, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Dec 1, 2023 · IPR2023-00799 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been unpatentable as obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Patent Owner that Petitioner has not addressed limitation 1[f] persuasively. Pet. 43–44; Prelim. Resp. 19–21. Even assuming Petitioner is correct that Miliefsky’s network-based assets list constitutes “temporal events,” as recited in claim 1, Petitioner does not persuasively address certain other aspects of the claim language. For example, Petitioner does not support sufficiently its contention that “Miliefsky teaches ‘generating . . . temporal events based at least in part on analyzing the third party network endpoint assessments.’” Pet. 44 (citing Ex. 1003 ¶¶ 198–201) (emphasis added). Petitioner cites Miliefsky’s paragraph 94, which does not expressly disclose generating the alleged temporal events (the network-based assets list) based at least in part on analyzing third party network endpoint assessments. Ex. 1006 ¶ 94; Pet. 44. According to Petitioner, however, Miliefsky discloses “configuration data collected or processed at particular time (‘temporal events’) can be combined with vulnerability assessment data and include related data, which . . . is disclosed as being sourced from third parties.” Pet. 44 (citing Ex. 1003 ¶ 201). Petitioner also argues that “internal assessments such as the generated network asset list are disclosed as being combined with external assessments to provide feedback to each other (e.g., to produce control lists).” Id. (citing Ex. 1003 ¶¶ 202–203; Ex. 1006 ¶ 94). Even if accurate, these arguments do not show sufficiently for institution that Miliefsky teaches generating temporal events based at least in arguments indicate that Miliefsky discloses combining the alleged temporal events (the network-based assets list) with third party network endpoint assessments. As Patent Owner observes, combining temporal events with endpoint assessments logically would not constitute generating the temporal events based on the endpoint assessments. Prelim. Resp. 20–21.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “patent “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10 (citing Ex. 1003 ¶ 83). Petitioner adds that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “B. CLAIM CONSTRUCTION We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary 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, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 10–11; Prelim. Resp. 11. Having considered the record, we agree with the parties that no explicit claim construction is Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). C. GROUND 1 – ALLEGED OBVIOUSNESS OVER MUKHERJEE AND MILIEFSKY” slip op. at 11

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

    “Patent Owner that Petitioner has not persuasively addressed limitation 1[g]’s requirement for “correlating . . . the received endpoint events and the generated temporal events.” Ex. 1001, 40:6–7; Pet. 45–47. Petitioner does not provide a sufficiently persuasive, objective basis for its contention that it would have been obvious to include Miliefsky’s network-based assets list “into the correlation operations of Mukherjee.” Pet. 46 (citing Ex. 1003 ¶ 216). Petitioner argues that Mukherjee suggests such a modification in the following passage: The fourth layer of the model introduces the event in context. There are two kinds of context: temporal and spatial. As an example of temporal context, behavior which is unremarkable during standard working hours may be suspicious during off-hours [35]. The IDM, therefore, allows for the application of information about wall-clock time to the events it is considering. Wall-clock time refers to information about the time of day, weekdays versus weekends and holidays, as well as periods when an increase in activity is expected. In addition to the consideration of external temporal context, the expert system uses time windows to correlate events occurring in temporal proximity. This notion of temporal proximity implements the heuristic that a call to the UNIX who command followed closely by a login or logout is more likely to be related to an intrusion than either of those events occurring alone. Such related patterns of behavior are also referred to as attack signatures [23,24]. Ex. 1005, 13 (emphases added consistent with emphases in Petition); Pet. 45–46. Petitioner does not sufficiently support its position that this passage of Mukherjee would have suggested adding a network-based assets list into certain information, but not an assets list. Ex. 1005, 13. And, as Patent Owner notes, the only “correlat[ing]” mentioned in the cited passage is “correlat[ing] events occurring in temporal proximity.” Id.; Prelim. Resp. 21–22. Petitioner does not provide a persuasive, objective basis for its view that these disclosures suggest including Miliefsky’s network-based assets list into the process of correlating temporally proximate events. Pet. 46. Petitioner does not, for example, persuasively show for institution how or why Mukherjee’s discussion of correlating temporally proximate events and/or its reference to attack signatures allegedly would have suggested correlating Miliefsky’s network-based assets list and endpoint events. Id. Nor does Dr. Nielson’s testimony substantiate Petitioner’s argument that the cited passage of Mukherjee suggests the proposed modification. Id. (citing Ex. 1003 ¶ 216). Indeed, Dr. Nielson does not testify that Mukherjee suggests including a network-based assets list in correlation operations. E.g., Ex. 1003 ¶ 216. Moreover, Petitioner and Dr. Nielson do not otherwise sufficiently support Petitioner’s position that it would have been obvious to correlate Miliefsky’s network-based assets list and Mukherjee’s events. Pet. 46; Ex. 1003 ¶¶ 209–220. Consistent with Patent Owner’s arguments, Petitioner and Dr. Nielson do not articulate or substantiate a sufficiently persuasive reason that a person of ordinary skill in the art would have had for modifying Mukherjee to correlate Miliefsky’s network-based assets list and Mukherjee’s temporally proximate events. E.g., Pet. 45–47; Ex. 1003 ¶¶ 209–220; Prelim. Resp. 21–22. Petitioner and Dr. Nielson do not, for example, explain how or why a person of ordinary skill in the art would have” slip op. at 22

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,092,616
• Trend Micro, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Dec 1, 2023 · IPR2023-00801 · APJ Steven M Amundson · IPR · Institution

  Denied institution because neither Munetoh and Rajan nor Rajan and Munetoh showed a reasonable likelihood of proving claims 1–7 and 9 obvious under § 103.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

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

    “Ex. 1005, 2–3. Petitioner maps the claimed “one or more executable file binaries of the application and loaded components of the application” to the “software components” executed during Munetoh’s trusted-bootstrap process. Pet. 23. Petitioner maps the claimed “attestation server” to Munetoh’s server-PVA. Id. at 19, 21, 27. But Petitioner fails to show that Munetoh’s server-PVA receives the “software components” executed during Munetoh’s trusted-bootstrap process. See id. at 22–24; Ex. 1003 ¶¶ 158–165.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in computer science, or a related field, or an equivalent technical degree or equivalent work experience, and an additional one to two years of education or experience in the field of computer security topics.” Pet. 10. Petitioner also asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Dr. Nielson’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 81. For purposes of the Preliminary Response only, “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 11–12 (quoting Pet. 10). Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’441 patent as well as the asserted prior art.” slip op. at 13

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

    “For purposes of this proceeding only, “Petitioner proposes that all claim terms should be given their plain and ordinary meanings.” Pet. 10. Further, Petitioner asserts that “no specific claim constructions are necessary to apply the asserted prior art to” the challenged claims. Id. For purposes of the Preliminary Response only, “Patent Owner believes that claim construction is not required to resolve any issues.” Prelim. Resp. 9. Additionally, Patent Owner notes that in the Consolidated Litigation Patent Owner and Petitioner have proposed constructions for certain claim language, including the following terms and limitations in claim 1: (Fed. Cir. 2017). Based on the current record, 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 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,327,441
• Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Nov 21, 2023 · IPR2023-00706 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–7 would have been obvious over Das.

  RulingsInstitution decision

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

    “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). Having considered the arguments and the associated evidence, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent “would have been a person with at least a bachelor’s degree in computer science, computer engineering, or electrical engineering or in a related field and at least three years of experience in computer network security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’616 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

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

    “Both parties express that we do not need to construe any claim language explicitly. Pet. 6; Prelim. Resp. 13. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner does not show sufficiently that Das teaches or would have rendered obvious the claimed use of “network endpoint assessments.” Petitioner does not substantiate its conclusory argument that Das’s network threat information constitutes the claimed “network endpoint assessments.” Pet. 21. In support of this argument, Petitioner cites Dr. Jeffay’s testimony, but that testimony is entitled to little weight because it is verbatim to Petitioner’s conclusory argument. Compare Pet. 21 with Ex. 1003 ¶ 66; Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”). Neither Petitioner nor Dr. Jeffay provides persuasive reasoning or evidence that Das’s network threat information relates to endpoints. Pet. 21–22; Ex. 1003 ¶¶ 66–67. Moreover, even if we assume Das’s network threat information somehow relates to endpoints, Petitioner and Dr. Jeffay do not provide persuasive reasoning or evidence that the information constitutes endpoint assessments, specifically. Pet. 21–22; Ex. 1003 ¶¶ 66–67.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,092,616
• Palo Alto Networks, Inc. v. Taasera Licensing LLCInstitution denied
  PTAB · Nov 21, 2023 · IPR2023-00705 · APJ Neil T Powell · IPR · Institution

  The Board denied institution because Palo Alto Networks did not show a reasonable likelihood that claims 1–5 would have been obvious over Das and Overcash.

  RulingsInstitution decision

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

    “reasonable likelihood of establishing that independent claim 1 would have been obvious over Das and Overcash. Petitioner’s arguments and evidence regarding dependent claims 2–5 do not cure the deficiencies in Petitioner’s challenge to claim 1. Pet. 22–44. Accordingly, Petitioner does not demonstrate a reasonable likelihood of establishing obviousness of any of the challenged claims. III. CONCLUSION Because we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’948 patent, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

  • Skill levelSkill level petitioner adoptedOther

    “security and computer network application security.” Pet. 3 (citing Ex. 1003 ¶¶ 19–23). Petitioner also contends that “[s]omeone with less or different technical education but more relevant practical experience, or more relevant education but less practical experience, could also be considered a [person of ordinary skill in the art].” Id. Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which appears to be consistent with the ’948 patent and the asserted prior art, and we apply it in our analysis. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9

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

    “CLAIM INTERPRETATION B. We apply the same claim construction standard used in district courts, namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2022). In applying that standard, claim terms generally are given their ordinary and customary 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, 415 F.3d at 1312–13. Both parties express that we do not need to construe any claim language explicitly. Pet. 5–6; Prelim. Resp. 10. Having considered the record, we agree with the parties that no explicit claim construction is necessary for this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We agree with Patent Owner that Petitioner has not supported sufficiently its position that Das’s reputation engine 20 constitutes both “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. The portions of Das cited by Petitioner do not disclose that reputation engine 20 is a matrix. Ex. 1006 ¶¶ 18, 23–24, 48, 55, 58; Pet. 12–15. And Petitioner does not provide sufficiently persuasive, objective support for its contention that an engine constitutes a matrix. Pet. 14–15 (citing Ex. 1006 ¶ 55; Ex. 1003 ¶¶ 57–58). To the extent Petitioner implies that reputation engine 20 is a matrix because it correlates and otherwise processes information when generating and modifying reputation scores, Petitioner does not explain persuasively why performing 4 The Preliminary Response cites “Ex. 2002, 8-10,” but this appears to be a typographical error, as Exhibit 2003 is the parties’ district court Joint Claim Construction and Prehearing Statement. those actions would make an engine a matrix. Id. Indeed, in tension with Petitioner’s conclusory position that an engine is a matrix, the ’948 patent discloses using more than one “correlation matrix,” in addition to a “correlation engine,” suggesting that an engine is not a matrix. Ex. 1001, 15:14–19 (“event correlation matrix 633”), 15:38–41 (“risk correlation matrix 411”), 15:29–35 (“system event correlator 410 can be implemented as a correlation engine”). Moreover, even if Petitioner had persuasively supported its position that an engine is a matrix, Petitioner does not provide sufficiently persuasive, objective support for its contention that Das’s single reputation engine 20 constitutes two matrices. Id. For the foregoing reasons, Petitioner does not provide persuasive arguments and evidence that the cited prior art teaches or suggests “an event correlation matrix” and “a risk correlation matrix,” as recited in claim 1. Nor does Petitioner provide persuasive arguments and evidence that this claim limitation otherwise would have been obvious over the cited prior art, as Petitioner does not argue, much less substantiate, that it would have been obvious to modify the prior art’s disclosures to use “an event correlation matrix” and “a risk correlation matrix.” See, e.g., Pet. 12–15.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,990,948

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.