• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00378 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 14 and 16–24 are unpatentable as obvious over Bace and Russinovich; claims 25 and 26 were not shown unpatentable because the evidence did not establish the claimed feature-likelihood limitations.

  RulingsFinal written decision

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

    “contends that this construction is necessary to clarify that the challenged claims require monitoring registry accesses because Petitioner’s declarant, Dr. Michael T. Goodrich, testified during his deposition that the records “may be records that don’t have direct impact on the registry.” Id. at 7–8. Even if Patent Owner’s characterization of Dr. Goodrich’s deposition testimony is accurate, Petitioner does not argue in the Petition or the Reply that the challenged claims do not require monitoring registry accesses. See Pet. 13–15, 21–32; Pet. Reply 1, 3–8. As such, there does not appear to be a dispute that requires claim construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). Nonetheless, in order to avoid any ambiguity, we provide an express construction of the phrase “records regarding processes that access the operating system registry.” We determine that the evidence supports Patent Owner’s proposed construction. The written description of the ’084 patent consistently indicates that records of processes are obtained by monitoring accesses to the operating system registry. Ex. 1001, col. 5, ll. 6–18, col. 8, ll. 9–10, col. 8, ll. 22–24, col. 13, ll. 28–31, col. 13, ll. 46–52. In addition, Petitioner acknowledges that the challenged claims require monitoring accesses to the operating system registry. Tr. 12:15–13:3. Patent Owner’s proposed construction, however, omits the claim terms “processes” and “operating system,” which are part of the phrase being construed. Ex. 1001, col. 23, ll. 32–34. Therefore, we modify Patent Owner’s proposed construction to include those terms. Specifically, we construe the phrase “records regarding processes that access the operating system registry” to mean “records regarding processes obtained by monitoring accesses to the operating system registry.”1” slip op. at 6

  • Skill levelOther

    “of ordinary skill in the art at the time of the ’084 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’084 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 28. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 9–10. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex 1029 ¶¶ 7–8; Ex. 2018, 78:2-23. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case. Patent Owner argues that, even if Petitioner correctly defines the level” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “90–93, 128, 139 (pp. 68–69); Ex. 1029 ¶¶ 9–10. Therefore, the teachings of Bace, together with the background knowledge and perspective of a person of ordinary skill in the art, would have made it obvious to use records obtained by monitoring registry accesses as an information source for an anomaly detection system. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362– 63 (Fed. Cir. 2013); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015).” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Thus, Petitioner identifies evidence indicating that Bace teaches determining the likelihood of observing an event, but does not identify evidence indicating that Bace teaches determining the likelihood of observing a feature, as recited in claim 25. Pet. 41–42; Pet. Reply 23–24; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 41–42; Pet. Reply 23–24; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’084 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”). Therefore, we determine that Petitioner has not shown by a preponderance of the evidence that claim 25 would have been obvious over Bace and Russinovich.” slip op. at 28

  Patent outcomesUS 7,448,084 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,448,084
• Symantec Corporation v. The Trustees Of Columbia University In The City Of New YorkSome claims unpatentable
  PTAB · May 31, 2016 · IPR2015-00374 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–4 are unpatentable as anticipated by Bace and Denning; claims 7 and 8 were not shown unpatentable because neither reference disclosed determining the likelihood of observing a feature.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “of ordinary skill in the art at the time of the ’306 patent would have had “a Master’s degree in computer science or a related field with two to three years of experience in the field of software security systems.” Ex. 1003 ¶ 20. Patent Owner’s declarant, Dr. George Cybenko, testifies that a person of ordinary skill in the art at the time of the ’306 patent would have had “an undergraduate degree in computer science or mathematics, and one or two years of experience in the field of computer security.” Ex. 2019 ¶ 24. Thus, Petitioner’s declarant, Dr. Goodrich, defines the level of ordinary skill in the art slightly higher in both education and experience. Patent Owner points out this difference, but does not argue that it materially impacts either party’s analysis. PO Resp. 8. In fact, Petitioner’s declarant, Dr. Goodrich, testifies that his analysis would not change under the slightly lower level of ordinary skill in the art set forth by Patent Owner. Ex. 1029 ¶¶ 7–8. In other words, the minor distinctions between the parties’ proposed levels of ordinary skill in the art are not material. As a result, we determine that both parties define the level of ordinary skill in the art appropriately in this case.” slip op. at 5

  • BurdenMixed

    “determining the likelihood of observing an event, but does not identify evidence indicating that Bace discloses determining the likelihood of observing a feature, as recited in claim 7. Pet. 30–32; Pet. Reply 14–15; Tr. 30:2–15, 31:6–12. Petitioner instead argues that an event is the “same thing” as a feature. Tr. 30:20–24, 32:9–13. Petitioner, however, improperly presented this argument for the first time at the oral hearing. Id. at 30:13– 15; Pet. 30–32; Pet. Reply 14–15; see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be presented at the oral argument.”). Moreover, Petitioner does not identify any evidence from the ’306 patent (or otherwise) to support its argument that an event is the same thing as a feature. Tr. 31:1–5; see Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381–82 (Fed. Cir. 2008) (“Our precedent instructs that different claim terms are presumed to have different meanings.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Bace specifies that certain information sources are used for a computer system with a Windows operating system. Namely, Bace discloses that, for a Windows computer system, “security log events are the primary focus of intrusion detection systems,” and “especially those having to do with the creation, deletion, and alteration of system files and other 3 Patent Owner suggests that this portion of Bace only relates to the system call records gathered by UNIX system audit trails. Paper 48 ¶¶ 3–5. Section 3.2.4 of Bace, however, describes the advantages of operating system audit trails generally, not just UNIX system audit trails. Ex. 1007, 70. objects.” Id. at 74–75 (emphases added). Bace then explains that the reference data obtained from the Windows computer system is used to generate the anomaly detection models discussed later in Bace. Ex. 1007, 109 (“Anomaly detectors are populated by running them against the collected reference event data.”); id. at 74–75, 121–122; Ex. 1003 ¶ 112. Thus, for a Windows computer system, Bace expressly links the reference data obtained by monitoring the creation, deletion, and alteration of system files with the disclosed anomaly detection models. Ex. 1029 ¶¶ 15–19; cf. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370–71 (Fed. Cir. 2008) (explaining that the prior art did not link two distinct teachings). Bace further discloses that Denning’s anomaly detection model, which includes the mean and standard deviation model, is the “seminal” anomaly detection model. Ex. 1007, 108, 121–122. As a result, Bace provides a specific reason for selecting Denning’s anomaly detection model from among the other models disclosed in Bace. Ex. 1003 ¶ 111; Ex. 1029 ¶ 19. c. Summary For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 is anticipated by Bace.” slip op. at 11

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Here, Patent Owner argues that Petitioner’s Reply exceeds the scope of a proper reply because it presents a new theory of unpatentability for claim 7 based on the TIM system in Bace that is not included in the Petition. PO Mot. Str. 2–3. Petitioner, on the other hand, argues that its Reply is proper because the Petition relies on the TIM system in Bace with respect to claim 8, and, thus slip op. at 27

  Patent outcomesUS 7,913,306 mixed
  § 102 anticipation
  Patents in suitUS 7,913,306
• EMC Corporation v. Acqis LLCNo claims unpatentable
  PTAB · Mar 8, 2016 · IPR2014-01462 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 54 and 56–61 were not shown unpatentable because the evidence did not establish that the cited references rendered the claimed PCI transaction communication obvious.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 43, ll. 48–49, col. 44, l. 6; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 5, ll. 31–33 (“The present invention . . . interface[s] two PCI or PCI-like buses”), with id. at col. 10, ll. 53–55 (“Additionally, the peripheral controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added).” slip op. at 6

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

    “obvious over Horst and LVDS Owner’s Manual; claims 56 and 59 would have been obvious over Horst, LVDS Owner’s Manual, and Pocrass; and claim 58 would have been obvious over Horst, LVDS Owner’s Manual, and Deters. Pet. 58–59. A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of non-obviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has not shown by a preponderance of the evidence that claims 54 and 56–61 would have been obvious over the cited references.” slip op. at 7

  • ExcludeMotion to exclude, deniedMixed

    “Owner argues that paragraphs 10–24 and 31–37 of Exhibit 1031 should be excluded as irrelevant and prejudicial because Petitioner relies on those paragraphs to support improper arguments in the Reply. PO Mot. 8. Petitioner argues in the Reply that the TNet transaction in Horst includes PCI address bits, and that claim 54 only requires communicating two bits of a PCI bus transaction. PO Mot. 1. Patent Owner contends that both arguments exceed the scope of a proper reply, as set forth in 37 C.F.R. § 42.23(b), and that the portions of Exhibit 1031 that Petitioner relies upon to support those arguments should be excluded as irrelevant and prejudicial. PO Mot. 2–4, 6, 7. Patent Owner’s argument is not persuasive. Patent Owner argues in the Response that the TNet transaction in Horst does not include PCI address bits. PO Resp. 27–29. As such, Petitioner’s argument in the Reply that the TNet transaction includes PCI address bits is responsive to an argument raised in the Response. See 37 C.F.R. § 42.23(b) (generally permitting a reply to respond to arguments raised in a response). Patent Owner also argues in the Response that claim 54 requires communicating a 32-bit PCI address. PO Resp. 8–11. As such, Petitioner’s argument in the Reply that claim 54 only requires communicating two bits of a PCI bus transaction is responsive to an argument raised in the Response. Because we are not persuaded that the identified arguments in the Reply are improper, the premise of Patent Owner’s Motion to Exclude Exhibit 1031 fails. Therefore, Patent Owner’s Motion to Exclude paragraphs 10–24 and 31–37 of Exhibit 1031 is denied.” slip op. at 16

  Patent outcomesUS 8,041,873 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,041,873
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00836 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious over the cited combinations of the EFA Manual, Thomas, and, where applicable, Greene or Brigham.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “term “anomaly” is “deviation from the normal or common order, form, or rule.” Dec. on Inst. 7 (citing THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 54 (1975)); Ex. 3001, 54. The examples provided in the ’856 patent for identifying a voltage anomaly are consistent with this definition. Namely, a spike in the electric field or an increase in the electric field above a threshold would indicate a deviation from the normal order. Ex. 1002, col. 17, ll. 12–19, col. 18, ll. 8–9, col. 19, ll. 62–67, col. 21, ll. 4– 7. Therefore, we determined that the broadest reasonable interpretation of the phrase “identify the voltage anomaly in the electric field” in claim 1 of the ’856 patent is “identify a deviation from a normal voltage in the electric field, including by identifying an electric field that exceeds a threshold, or that rises and peaks above a threshold or background and then falls.” Dec. on Inst. 7. We see no reason now to deviate from that construction.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 24–27, 42–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1022 ¶¶ 51–55, 65–67. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 52–53; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1022 ¶¶ 104–106; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 54–56; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1022 ¶¶ 109–110; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1022 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’856 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,536,856 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,536,856
• L-3 Communications Holdings, Inc. / Premier Utility Services, LLC v. Power Survey, LLCAll claims unpatentable
  PTAB · Nov 23, 2015 · IPR2014-00834 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–5 and 8 are unpatentable as obvious under § 103(a) over the specified combinations of the EFA Manual, Thomas, and, for dependent claims, Greene or Brigham.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner

    “proposed construction is not the broadest reasonable interpretation, and we see no reason now to deviate from that determination. Dec. on Inst. 5–6. Specifically, the word “unexpected” in Petitioner’s proposed construction is not found anywhere in the claims or the written description of the ’274 patent, and we are not persuaded that the word “unexpected” is synonymous with “undesirable” or “dangerous.” Further, Petitioner does not explain how any of the cited portions of the prosecution history show that the “voltage anomaly” recited in claim 1 is an unexpected voltage. Pet. 15–17.” slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “obvious to mount the electric field sensor taught by the EFA Manual on the motor vehicle taught by Thomas because Thomas expressly teaches mounting an electric field sensor on a motor vehicle and using it to identify electric field anomalies while the vehicle is in motion. Pet. 25–28, 43–45; Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14; Ex. 1023 ¶¶ 51–55, 64–66. Further, the combination would have involved combining known elements (i.e., the electric field sensor in the EFA Manual and the motor vehicle in Thomas) according to known methods (i.e., mounting the sensor on the vehicle with a pipe or other structure as taught by Thomas) to yield predictable results (i.e., identifying anomalies in electric fields while the vehicle is in motion as taught by Thomas). See KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Greene with the EFA Manual and Thomas because the EFA Manual teaches determining the location of an electric field measurement, and, thus, one of ordinary skill in the art would have considered well-known ways to determine location, such as the GPS receiver in Greene. Pet. 53–54; Ex. 1004, Annex B; Ex. 1006, col. 4, ll. 39–62; Ex. 1023 ¶¶ 100–102; see KSR, 550 U.S. at 416. Petitioner identifies evidence indicating that it would have been obvious to combine Brigham with the EFA Manual and Thomas because the EFA Manual teaches using the fast Fourier transform to produce electric field strengths, and, thus, one of ordinary skill in the art would have looked to other references, such as Brigham, for well-known ways to implement the fast Fourier transform. Pet. 55–57; Ex. 1004 § 6.3, Annex C; Ex. 1008, 83–87; Ex. 1023 ¶¶ 105–106; see KSR, 550 U.S. at 416.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “c. Teaching Away Patent Owner argues that the EFA Manual teaches away from the combination proposed by Petitioner. PO Resp. 27–30. In particular, Patent Owner argues that the EFA Manual teaches that the electric field sensor disclosed therein must be mounted on a tripod. Id. at 29. According to Patent Owner, requiring the sensor to be mounted on a tripod indicates that the sensor cannot be used while in motion. Id. at 28–30. Patent Owner’s argument is not persuasive. Although the EFA Manual requires that the sensor be “mounted on a tripod and insulated from it” (Ex. 1004 § 3.4.1), Patent Owner does not identify any teaching in the EFA Manual that prohibits the sensor from being used while in motion (Ex. 1024, 108:20– 109:3). Further, as discussed above, Thomas teaches that an electric field sensor can be mounted to an electrically non-conductive support structure on a motor vehicle and used while the vehicle is in motion. Ex. 1005, col. 3, ll. 12–19, col. 6, l. 62–col. 7, l. 25, Figs. 9–14. Thus, one of ordinary skill in the art reading the EFA Manual and Thomas together would understand that the sensor taught in the EFA Manual could be mounted securely to and insulated from a support structure on a motor vehicle, which would satisfy the conditions for use set forth in the EFA Manual. See Ex. 1023 ¶¶ 52–53.” slip op. at 22

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “could only identify voltage anomalies by making direct contact with each potential hazard using a handheld device. PO Resp. 36. According to Patent Owner, this manual scanning did not scale effectively to large cities because of the geographic footprint and large number of potential hazards. Id. at 36– 37. Patent Owner contends that this demonstrates a long-felt but unmet need “for efficient, scalable, stray voltage detection capable of serving as an alternative to manual testing.” Id. at 37. Although Patent Owner explains generally why the technology existing prior to the ’274 patent may not have been ideal for large cities, that alone does not indicate that utility companies actually had a long-felt but unmet need for a more efficient alternative, rather than, for example, just a lack of interest in the technology.” slip op. at 23

  Patent outcomesUS 8,482,274 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,482,274
• Digital Ally, Inc. v. Utility Associates, Inc.Some claims unpatentable
  PTAB · Jul 27, 2015 · IPR2014-00725 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–7, 9, 10, and 12–25 are unpatentable; claim 11 was not shown unpatentable because the petitioner did not explain why the Monroe ’320 multiplexer would perform compression.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill in the art is consistent with the types of problems encountered in the art and the prior art solutions to those problems. See In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The ’556 patent explains that: The VCR is a technical device nearing the end of its lifecycle; therefore, no serious advancements are on the drawing board that address the numerous technical issues incumbent to videotape recording. On the other hand, digital capture and storage is at the beginning of its technological curve, with rapid development of new devices. The only available means to ensure sufficient quality and control of video recording, access, and storage is an increase in the number of well-trained persons with those responsibilities. Ex. 1001, col. 1, ll. 29–37 (emphasis added). In other words, the ’556 patent focuses on transitioning surveillance systems from outdated VCR technology to the rapidly developing technology of digital capture and storage. Id. This is also reflected in the claims of the ’556 patent, which recite “capturing,” “integrating,” and “storing” information. See, e.g., id. at col. 8, ll. 44–49. Petitioner’s proposed level of ordinary skill in the art, thus, appropriately includes an education in electrical engineering or computer science and experience in signal processing, or other related disciplines. Ex. 1003 ¶ 39.” slip op. at 4

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner submits evidence showing that the ordinary and customary meaning of the term “vehicle” is any means of carrying or transporting something and, thus, includes an aircraft. Pet. 19–20; Ex. 1007, 4. This definition is consistent with the Specification of the ’556 patent, which indicates that the disclosed surveillance system has “airline applications.” Ex. 1001, col. 2, ll. 15–19. Patent Owner, on the other hand, identifies portions of the Specification and prosecution history that describe a land-based, first-responder vehicle as an example of a vehicle. PO Resp. 17–18; Ex. 1001, col. 2, ll. 39–44 (“The embodiment disclosed herein is used in a police car,” but “the present invention is not limited to this example.”) (emphasis added); Ex. 1002, 59 (“The present invention is used for emergency response vehicles, such as police cars, ambulances, and the like.”) (emphasis added). But the Specification shows that the term “vehicle” is broader. Namely, the ’556 patent states that the disclosed surveillance system is “for use in public and commercial vehicles” and “can be deployed on police, fire, and rescue vehicles and is adaptable for use on transportation and industry vehicles, as well as having rail and airline applications.” Ex. 1001, col. 1, ll. 7–10, col. 2, ll. 15–19. Therefore, we decline to limit the term “vehicle” to particular examples in the Specification or prosecution history. See Aria Diagnostics, Inc. v. Sequenom, Inc., 726 F.3d 1296, 1301 (Fed. Cir. 2013).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “The parties agree that the term “integrating” refers to “combining.” Pet. 21; PO Resp. 37. This is consistent with the Specification of the ’556 patent, which states: “The captured data from the sixteen inputs . . . are . . . combined with the video and audio information . . . to create aggregated documentation that is sent to a storage unit 270 in one data stream.” Ex. 1001, col. 4, ll. 28–34 (emphasis added). The parties also agree that the term “integrating” does not include superimposing, mixing, laying over, or layering. Pet. 21–22; PO Resp. 36–37; Ex. 1003 ¶ 49; Tr. 9:1–9. This is consistent with statements made by the patentee during prosecution of the application that issued as the ’556 patent. Ex. 1002, 129–30.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “unpatentable under 35 U.S.C. § 102(e) as anticipated by Monroe ’320. Pet. 12. A claim is anticipated if each limitation of the claim is disclosed in a single prior art reference arranged as in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Petitioner provides detailed explanations and evidence showing how Monroe ’320 discloses each claim limitation as arranged in the claims. Pet. 30–38, 42–43, 45–51, 53–55. We have considered the parties’ arguments and supporting evidence, and we determine that Petitioner has shown by a preponderance of the evidence that claims 1–4, 9, 13–18, and 20–25 are unpatentable as anticipated by Monroe ’320. We address below Patent Owner’s arguments. 1. Monroe ’320 Monroe ’320 discloses a surveillance system for aircraft, ships, and land vehicles. Ex. 1004, col. 1, ll. 27–34, col. 1, ll. 60–65. The surveillance system in Monroe ’320 includes video cameras, microphones, and sensors for capturing video, audio, and data information, respectively. Id. at col. 22, ll. 4–10, col. 22, ll. 40–44, col. 22, ll. 48–51, Fig. 15. Monroe ’320 discloses a digital multiplexer network that combines the video, audio, and data into a combined, comprehensive output signal. Id. at col. 22, ll. 57–64, col. 23, ll. 15–17, Fig. 15. Monroe ’320 discloses storing the combined, comprehensive output signal on a recorder in the vehicle and transmitting the combined, comprehensive output signal to a ground station. Id. at col. 23, ll. 10–12, col. 23, ll. 17–22.” slip op. at 13

  Patent outcomesUS 6,831,556 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,831,556

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.