- Skechers USA, Inc. v. Adidas AGNo claims unpatentablePTAB · Apr 25, 2018 · IPR2017-00125 · APJ Josiah C Cocks · IPR · Final written decision
Claims 20–32 were not shown unpatentable under §103 because the proposed modifications to Luthi ’202 were unsupported and relied on hindsight.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“artisan’s experience. In that respect, Petitioner urges that the artisan generally has “substantial experience in the structural design of flexible elements and plastic polymers,” whereas Patent Owner characterizes the experience as directed to “biomechanical systems.” The ’285 patent is clearly directed to matters of shoe construction, and takes note, for instance, of the desirability of “cushioning and biomechanically supporting the foot.” Ex. 1001, 1:19–21. It is also apparent that an overarching focus of the ’285 patent is concern with “balance” and “support” of a “foot against misorientations such as pronation and supination (i.e. a tilting movement of the forefoot part to the medial and the lateral side, respectively.” Id. at 2:28– 31. Such concerns, in our view, go beyond general experience in the design of flexible elements and plastic polymers. In that regard, we credit the testimony of Patent Owner’s declarant, Dr. Hinrichs, that a person of ordinary skill in the art would have experience with biomechanical systems, such as shoes. See Ex. 2001 ¶¶ 14–15. In crediting Dr. Hinrichs’s assessment of the level of ordinary skill in the art we observe that, although Petitioner makes reference to the testimony of its declarant Mr. Ganaja (see Pet. 6 (citing 1002 ¶¶ 39–43)), Mr. Ganaja makes no evaluation of his own in that testimony in connection with the level of ordinary skill. We have considered the respective opinions of the parties when it comes to the level of ordinary skill in the art. In reaching our decision as to the merits of this proceeding, for the reasons discussed above, we are persuaded by Patent Owner’s evidence as to the ordinary skill of an artisan.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 18–21 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 8 and 11–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that “come together integrally to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently disclosed that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“column 11, lines 23–26 to support the meaning of “leaf spring[s]” and “leaf spring element[s]” that it advances. That portion of the ’285 patent describes embodiments of the invention appearing in Figures 19 to 25. Referencing particular leaf spring elements 22 and 23 of those embodiments, the ’285 patent states that “[t]ypically the restoring force exerts a force that has a component orthogonal to the sole plate (e.g., for cushioning) and a component parallel to the sole in the rearward direction (e.g., for acceleration).” Ex. 1001, 11:23–26. While that language mirrors the meaning of “leaf spring[s]” and “leaf spring element[s]” proposed by Patent Owner, we discern that the noted clause also begins with the term “[t]ypically.” That leaf spring elements may “typically” include a component parallel to the sole in the rearward direction does not lend itself to the conclusion that a “leaf spring” or “leaf spring element” necessarily includes such a component. Rather, it conveys the opposite. In that respect, the plain understanding of the pertinent content of the ’285 patent is that, while, perhaps, not typical, the ’285 patent contemplates other component arrangements, logically including those in which the parallel component is not in the rearward direction. Indeed, our above-noted understanding is also consistent with other embodiments described in the ’285 patent. For instance, embodiments depicted in Figures 13–16 show elements 23 extending in a forward direction with respect to the sole. The elements 23 of those figures are described as “leaf spring elements.” Id. at 10:15–50. Moreover, the ‘285 patent makes explicit that those leaf spring elements “are either forwardly or rearwardly directed.” Id. at 10:49–50. Patent Owner’s position that the claimed “leaf springs” or “leaf spring elements” require a parallel component extending in the rearward direction is inconsistent with these particular figures and the accompanying description in the ’285 patent. To that end, Patent Owner does not explain persuasively why the meaning of the term “leaf spring” encompasses only a parallel component in the rearward direction, yet the ’285 patent clearly provides that leaf springs may also have components that extend in the forward direction. Accordingly, for the foregoing reasons, we again conclude that “leaf spring[s]” and “leaf spring element[s]” mean “a flexible member that deflects and provides a restoring force with an orthogonal and a parallel component in response to a load applied to the sole.” We discern that it is unnecessary to construe expressly any other claim term of the ’285 patent. 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.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 18–21 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 8 and 11–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that “come together integrally to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently disclosed that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally.” slip op. at 20
Patent outcomesUS 9,345,285 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,345,285 - Resmed Limited / Resmed Inc. et al. v. Fisher & Paykel Healthcare LimitedNo claims unpatentablePTAB · Mar 7, 2018 · IPR2016-01724 · APJ Rama G Elluru · IPR · Final written decision
Claims 1, 2, 5–8, 11–13, 21, 22, 26, and 27 were not shown unpatentable under § 103 because motivation to combine and reasonable expectation of success were not established.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a bachelor’s degree in electrical engineering or biomedical engineering or a related discipline with an understanding of circuit design principles, and a reasonable amount of relevant product design experience to develop a level of competence in the field of respiratory therapy, or an equivalent advanced education.” Pet. 18; Ex. 1003 ¶ 22. Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 9. We adopt Petitioner’s uncontested definition of the level of ordinary skill in the art. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the purposes of this Decision, we determine that no claim term needs express interpretation. 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.”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Tempered against Petitioner’s evidence of an alleged motivation to combine MR810, Gradon, and Edirisuriya is the uncertainty of operability of the proposed combination. With respect to each of the proposed circuit designs that Petitioner contends a skilled artisan would have been aware of to implement the combined teachings, a skilled artisan would have been faced with the real-world fact that there was uncertainty as to the operability of the design. First, the circuit designs that Petitioner proposes a skilled artisan would have utilized are not based on disclosure in the prior art. See Pet. Reply 5–7; Ex. 1032 ¶¶ 13–22. Petitioner does not rely on any prior art showing a circuit that allows a heater wire also to carry measurement signals. Pet. Reply 5–7; Ex. 2018, 19:6–21:17 (Petitioner’s expert, Mr. Bath, confirms that he did not locate any prior art references disclosing a circuit design in which the heater wire is utilized to carry electrical signals from measuring sensors). Moreover, Petitioner does not otherwise sufficiently rely on evidence that any of the proposed circuit designs would have been reasonably expected to be operable in any device, much less a humidification system. See Pet. Reply 5–7. Furthermore, Mr. Bath admits that these proposed designs are incomplete and would require additional non-trivial components. Ex. 2018, 89:13–90:21. He stated, “An engineer designing this system would need to take into account one change in the system by adjusting the rest of it to suit.” Id. at 89:16–18.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“We further find that Petitioner’s challenges rest on impermissible hindsight reconstruction of the disclosure in the ’641 patent. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983))). All of the circuit designs Petitioner proposes a skilled artisan could have used to implement the asserted combination are hindsight reconstructions based on the disclosure in the ’641 patent. The ’641 patent describes switching the heater wire between two modes of use— carrying temperature measurement signals and heating the gas delivery tube —by inserting a component in parallel with a temperature measuring thermistor to switch the current path of the heater wire between the thermistor and the parallel-connected component. Specifically, the ’641 patent discloses switching the current flowing in heater wire 21, 28 between the parallel paths of thermistor 23 and diode 22, depending on whether heater wire 21, 28 is being used to carry temperature measurement signals or heat gas delivery tube 3, respectively. Ex. 1001, 4:8–21. Each of Petitioner’s proposed circuits, drawn solely from the testimony of Mr. Bath and not supported by the prior art, has a similar purpose. Petitioner’s first proposed circuit contains a capacitor connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating wire is being used to carry temperature measurement signals, and the capacitor, when the heating wire is being used to heat the breathing tube. Ex. 1032 ¶¶ 15–16. Petitioner’s second proposed circuit contains a gate-todrain connected MOSFET connected in parallel with a thermistor to switch the path of the heating wire current between the thermistor, when the heating” slip op. at 25
Patent outcomesUS 8,453,641 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,453,641 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronNo claims unpatentablePTAB · Oct 18, 2017 · IPR2016-00908 · APJ Kamran Jivani · IPR · Final written decision
Petitioner did not prove claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 unpatentable over the instituted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The levels of ordinary skill proposed by the parties do not differ significantly. Both parties’ proposed descriptions require at least an undergraduate degree in electrical engineering or related technical field, and both value industry experience (although Petitioner quantifies this experience as two to three years). We adopt Petitioner’s proposed definition as more representative, but note that our analysis would be the same under either definition. We further find the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 8
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“testimony of Dr. Cairns that the combination is not predictable and not one that would have been made by a skilled artisan. Ex. 2010 ¶¶ 102– 103. Dr. Cairns relies on the ’183 Patent’s statements that its detection circuit “operates at a higher frequency than prior art touch sensing circuits,” which “is not a benign choice” relative to the prior art detection circuits. Id. ¶ 103 (quoting Ex. 1001, 8:9–14). Dr. Cairns further relies on the ’183 Patent’s description of testing required to identify ideal frequency ranges as further evidence that the combination of prior art elements is not predictable and not one that would have been made by a skilled artisan. Id. ¶¶ 103–104. We credit the testimony of Dr. Cairns on this point over the testimony of Dr. Subramanian because Dr. Cairns’ testimony is more fully developed and is supported by record evidence. For instance, Dr. Subramanian offers no explanation of why one would have found incorporating Gerpheide’s monitoring of oscillator frequencies, calculation of new frequencies, and use of newly-calculated frequencies “to be a predictable and common sense implementation.” Ex. 1002 ¶ 72; see also Ex. 1017 ¶ 8. Rather, Dr. Subrarmanian recites a potential benefit of the combination—namely “to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Id. Conversely, Dr. Cairns proffers the testing described in the ’183 patent as evidence that identifying the ideal frequency ranges for use in the claimed invention was not a predictable combination of prior art elements. Ex. 2010 ¶¶ 103–104.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On this evidentiary record, we are not persuaded one of ordinary skill in the art would have combined Gerpheide with Ingraham I and Caldwell to arrive at claim 40. Gerpheide is related to a single point input device, such as those used to provide data input in lieu of a mouse or stylus. Ex. 1012, 1:10–14, 1:19–20, 2:61–3:12. Like the ’183 patent, Ingraham I and Caldwell disclose capacitive response keypads. Ex. 1007. 1:5–9, 2:19–20; Ex. 1009, 1:6–9, 1:42– 44, 2:45–48. The ’183 patent describes monitoring electrical interference across a single electrode and varying the frequency of an oscillator frequency based on an interference measurement. Ex. 1001, 6:13–18, 8:22–9:33. Conversely, the ’183 patent describes “a multiple touch pad circuit” including “an array of touch circuits.” Id. at 18:34–46. The ’183 patent seeks to overcome the problem of unintended actuation of these touch circuits when such circuits are placed in dense arrays. Id. at 3:65–4:3. Recognizing guard rings and sensitivity adjustments “have gone a considerable way in allowing touch switches to be spaced in comparatively close proximity,” the ’183 patent addresses the remaining problem of surface contamination across the keypad. Id. at 4:14–18. The considerations described in the ’183 patent, Ingraham I, and Caldwell related to the close proximity of touch circuits in a keypad are wholly absent from Gerpheide. Petitioner relies on Dr. Subramanian’s testimony that an ordinarily skilled artisan would have looked to Gerpheide “for its teachings regarding electrical interference nullification in touch systems by measuring interference and adjusting the oscillator output frequency based on the measured interference.” Reply 7. Dr. Subramanian’s testimony, however, is conclusory on this point. See Ex. 1002 ¶¶ 69–72. The relevant portion of Dr. Subramanian’s testimony offers only that one would have found incorporating Gerpheide “to be a predictable and common sense implementation to allow the combined Ingraham I-Caldwell system to reject electrical interference regardless of its frequency without expensive nulling circuitry.” Ex. 1002 ¶ 72. It is not sufficient to demonstrate that each of the components in a challenged claim is known in the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Although Petitioner has identified in Gerpheide “teachings regarding electrical interference nullification in touch systems” (Reply 7), Petitioner and Dr. Subramanian fail to address fully—in the face of Petitioner’s evidence to the contrary, including Dr. Cairn’s testimony and Rympalski—why an ordinarily skilled artisan would look to such teachings in Gerpheide with a reasonable expectation of success for combining them with Ingraham I and Caldwell.” slip op. at 18
Patent outcomesUS 5,796,183 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 5,796,183 - Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision
The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20
Patent outcomesUS 8,225,408 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,225,408 - Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 17, 2017 · IPR2016-00955 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 were not shown unpatentable under the asserted obviousness combinations because the art did not teach dynamically building a parse tree while receiving the incoming stream.
RulingsFinal written decision- BurdenNot shown unpatentable
“The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10
Patent outcomesUS 8,225,408 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,225,408 - Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 17, 2017 · IPR2016-00157 · APJ Patrick M Boucher · IPR · Final written decision
The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable under the instituted §103 grounds because the art did not teach dynamically building a parse tree while receiving the code …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“At the oral hearing, we expressed surprise that a party would seek to exclude the cross-examination testimony of its own expert witness. See Tr. 49:19–52:8. Patent Owner’s counsel explained that it “provided a motion to exclude based on the way that the evidence was used in the reply.” Tr. 50:1–6. But the Board has previously explained that “neither a motion to strike nor a motion to exclude is a proper mechanism to present argument that a reply contains new arguments.” Ultratec, Inc. v. Sorenson Communications, Inc., Case IPR2013-00288, Paper 38 at 2 (PTAB May 23, 2014). Rather, an evaluation of the propriety of, and weight to be accorded to, arguments made in a reply is left to the determination of the Board, with parties afforded various opportunities to provide context for the evidence. See 37 C.F.R. §§ 42.23, 42.65. We, therefore, consider Patent Owner’s arguments as going to the weight that should be given to the cross-examination testimony and related deposition exhibit, not to the admissibility of that evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As indicated above, we have considered and weighed the testimony provided by Dr. Medvidovic and have not relied on the testimony of Dr. Bims in reaching our decision. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 25
Patent outcomesUS 8,225,408 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,225,408 - Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 17, 2017 · IPR2015-02001 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 were not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving code.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“5. Conclusion Having considered the arguments and evidence presented by both parties, we conclude that Petitioner has not shown, by a preponderance of the evidence, that any of challenged claims 1, 9, 22, 23, 29, or 35 would have been obvious over the combination of Chandnani and Kolawa, or would have been obvious over that combination in further combination with Walls. Because the challenges of the dependent claims suffer from the same deficiencies, we further conclude that Petitioner has not shown, by a preponderance of the evidence, that those dependent claims would have been obvious over the combinations of art it presents. Because we determine that the art does not disclose “dynamically building” a parse tree “while” receiving an incoming stream of program code, we need not consider whether a further conclusion of nonobviousness is warranted because of evidence of secondary considerations.” slip op. at 24
Patent outcomesUS 8,225,408 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,225,408 - Palo Alto Networks, Inc. / Blue Coat Systems, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 16, 2017 · IPR2016-00480 · APJ Miriam L Quinn · IPR · Final written decision
Claims 14 and 19 were not shown unpatentable because neither Shin nor Poison Java and Brown teaches executable code received at the destination without modification.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“according to the entire disclosure of the ’633 patent specification the executable code is received at the destination without modification. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the specification is “the single best guide to the meaning of a disputed term,” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.”). “The specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (quoting Vitronics, 90 F.3d at 1582, 1584 n. 6). We also confirm the scope of the “executable code” in light of the advantage of the invention, e.g., to protect against malicious code without modifying the executable code, thereby minimizing resources. See Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (construing a ring as permanently attached to the cover because all embodiments read together suggest this relationship and the specification describes the advantages of the unitary structure). Although the specification describes additional advantages, such as not requiring pre-installation of security code within the destination, the claims need not encompass all stated advantages. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). Finally, all the embodiments are consistent with and support the inventors’ characterization of the problem solved: avoiding the resource intensive modification by communicating to the destination the mobile protection code and the detected executable code. See Ex. 1001, 10:39−45; 1:63−3:6; see also O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997) (relying on the consistent disclosure of structures as being either non-smooth or conical and the statements distinguishing prior art where structures were smooth). In light of the disclosure, the plain and ordinary meaning of the disputed claim language emerges: the executable code whose operations are processed by the mobile protection code at the destination is the same as the executable code received, i.e., it undergoes no modification. In sum, we determine that the “executable code” at the destination is not modified.” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“research at Stanford, and archived by archive.org, shows that the article’s title was listed and that the article was publicly available through the Internet as of April 14, 1998. Ex. 1095. As explained in the affidavit proffered by Christopher Butler, Office Manager of Internet Archive, the URL format for captured website, “19980418130342/http://www-cs-students.stanford.edu/~ishin/research.html,” establishes that the website posting the abstract and the title of the article with a link to the article itself were archived on April 18, 1998 at 13:03:42. Id. The article was available as a PDF file, downloadable from the same page. Id. (identifying in a cover page the URL showing that Ex. 1009 was available from www-cs-students.stanford.edu/~ishin/paper.ps, as of April 18, 1998). We find this evidence credible and undisputed. Finally, there is also undisputed evidence that Dr. Rubin read Shin in 1998. Ex. 2022, 70:20−71:13. Accordingly, we find that Shin was publicly available and sufficiently accessible online to persons interested in applet security no later than April 14, 1998.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find that Shin’s constant pool is not the same as the IAT embodiment described in the ’633 patent. As stated above, the mobile protection code modifies the IAT at the destination while processing the one or more operations of the executable code. In contrast, Shin’s applet is modified at the proxy server, and its modification constitutes rewriting the bytecode of the applet, which is executable. See Ex. 1009, 2 (“we propose a technique, called bytecode modification, through which we put restrictions on applets by inserting additional bytecode instructions that will perform the necessary run-time tests”), 4 (“modified executable entities are inserted in Java bytecode”). As explained by Shin, the constant pool is part of the class file of the applet. Id. at 5. Further, the bytecode modification is not performed at run-time, like the IAT modification table scenario. See id. at 2 (“HTTP proxy server []modifies classes before they are received by the browser”), 4 (Shin explaining that the “safety mechanism must be applied before the applet is executed”). The differences are significant, for the modification of the applet at the server is precisely the type of modification that the ’633 patent sought to avoid. The applet is undisputedly executable code, and is what Petitioner pointed to in Shin as disclosing executable code. See Pet. 43 (“Shin also discloses that the safeguarding code processes operations attempted by the applet (‘executable code’) . . . .”). By describing that the server modifies the constant pool in the applet, we find that Shin teaches modifying the executable code before the applet is processed at the client browser. Therefore, Petitioner has failed to show by a preponderance of the evidence that Shin teaches or suggests that the applet is “executable code” as we have construed the claim language, supra.” slip op. at 26
- ExcludeMotion to exclude, deniedDenied
“and 2048 in general as irrelevant, potentially confusing, and prejudicial. Id. at 8−15. Petitioner’s Motion to Exclude is denied as moot, because that evidence objected to is not relied upon in reaching our determination that Petitioner has not met its burden of showing that claims 14 and 19 are unpatentable.” slip op. at 34
Patent outcomesUS 7,647,633 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,647,633 - Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Mar 16, 2017 · IPR2015-01974 · APJ Miriam L Quinn · IPR · Final written decision
Claims 14 and 19 were not shown unpatentable under either § 103 ground because both relied on modified executable code, contrary to the Board’s construction.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“To conclude, our determination is based on the plain and ordinary meaning of the claims within the context of the specification. First, 7 Similarly, Petitioner relies on testimony from the deposition of Finjan’s expert in the District Court litigation, Dr. Nenad Medvidovic, Exhibit 1100. Reply 5 (citing Ex. 1100). 8 We do not rely on expert testimony also because extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1290 (Fed. Cir. 2015). according to the entire disclosure of the ’633 patent specification the executable code is received at the destination without modification. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (the specification is “the single best guide to the meaning of a disputed term,” and “acts as a dictionary when it expressly defines terms used in the claims or when it defines terms by implication.”). “The specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” Bell Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed.Cir.2001) (quoting Vitronics, 90 F.3d at 1582, 1584 n. 6). We also confirm the scope of the “executable code” in light of the advantage of the invention, e.g., to protect against malicious code without modifying the executable code, thereby minimizing resources. See Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (construing a ring as permanently attached to the cover because all embodiments read together suggest this relationship and the specification describes the advantages of the unitary structure). Although the specification describes additional advantages, such as not requiring pre-installation of security code within the destination, the claims need not encompass all stated advantages. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). Finally, all the embodiments are consistent with and support the inventors’ characterization of the problem solved: avoiding the resource intensive modification by communicating to the destination the mobile protection code and the detected executable code. See Ex. 1001, 10:39−45; 1:63−3:6; see also O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997) (relying on the consistent disclosure of structures as being either non-smooth or conical and the statements distinguishing prior art where structures were smooth). In light of the disclosure, the plain and ordinary meaning of the disputed claim language emerges: the executable code whose operations are processed by the mobile protection code at the destination is the same as the executable code received, i.e., it undergoes no modification. In sum, we determine that the “executable code” at the destination is not modified.” slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“publication or dissemination. See Ex. 1009. Petitioner, however, has provided other evidence establishing that Shin was publicly available no later than April 1998. A printout of the website directed to Mr. Shin’s research at Stanford, and archived by archive.org, shows that the article’s title was listed and that the article was publicly available through the Internet as of April 14, 1998. Ex. 1095. As explained in the affidavit proffered by Christopher Butler, Office Manager of Internet Archive, the URL format for captured website, “19980418130342/http://www-cs-students.stanford.edu/~ishin/research.html,” establishes that the website posting the abstract and the title of the article with a link to the article itself were archived on April 18, 1998 at 13:03:42. Id. The article was available as a PDF file, downloadable from the same page. Id. (identifying in a cover page the URL showing that Ex. 1009 was available from www-cs-students.stanford.edu/~ishin/paper.ps, as of April 18, 1998). We find this evidence credible and undisputed. Finally, there is also undisputed evidence that Dr. Rubin read Shin in 1998. Ex. 2022, 70:20−71:13. Accordingly, we find that Shin was publicly available and sufficiently accessible online to persons interested in applet security no later than April 14, 1998.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We find that Shin’s constant pool is not the same as the IAT embodiment described in the ’633 patent. As stated above, the mobile protection code modifies the IAT at the destination while processing the one or more operations of the executable code. In contrast, Shin’s applet is modified at the proxy server, and its modification constitutes rewriting the bytecode of the applet, which is executable. See Ex. 1009, 2 (“we propose a technique, called bytecode modification, through which we put restrictions on applets by inserting additional bytecode instructions that will perform the necessary run-time tests”), 4 (“modified executable entities are inserted in Java bytecode”). As explained by Shin, the constant pool is part of the class file of the applet. Id. at 5. Further, the bytecode modification is not performed at run-time, like the IAT modification table scenario. See id. at 2 (“HTTP proxy server []modifies classes before they are received by the browser”), 4 (Shin explaining that the “safety mechanism must be applied before the applet is executed”). The differences are significant, for the modification of the applet at the server is precisely the type of modification that the ’633 patent sought to avoid. The applet is undisputedly executable code, and is what Petitioner pointed to in Shin as disclosing executable code. See Pet. 43 (“Shin also discloses that the safeguarding code processes operations attempted by the applet (‘executable code’) . . . .”). By describing that the server modifies the constant pool in the applet, we find that Shin teaches modifying the executable code before the applet is processed at the client browser. Therefore, Petitioner has failed to show by a preponderance of the evidence that Shin teaches or suggests that the applet is “executable code” as we have construed the claim language, supra.” slip op. at 26
- ExcludeMotion to exclude, deniedDenied
“and 2048 in general as irrelevant, potentially confusing, and prejudicial. Id. at 8−15. Petitioner’s Motion to Exclude is denied as moot, because that evidence objected to is not relied upon in reaching our determination that Petitioner has not met its burden of showing that claims 14 and 19 are unpatentable.” slip op. at 34
Patent outcomesUS 7,647,633 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,647,633 - Palo Alto Networks, Inc. / Symantec Corp. v. Finjan, Inc.No claims unpatentablePTAB · Mar 15, 2017 · IPR2016-00919 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–8, 10, and 11 were not shown unpatentable: Khazan did not teach invocation of the second function only if safe, and the asserted three-reference combination lacked a sufficient motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“reference to a “data container” (id. at 13:5152) and “network content” (id. at 4:3737), the concern over scripts embedded in web pages or “other web content” (id. at 1:3739), we conclude that the Specification of the ’154 patent uses the claimed “content” to refer broadly to the data or information, modified for processing, that the client receives from the network, where, in the case of the Internet, it may refer to a web page and its elements. This interpretation is consistent also with the meaning of the term in the art, as evidenced by dictionaries concerning computing and engineering. See content, Microsoft Computer Dictionary, 125 (5th ed. 2002) (Ex. 3002) (defining “content” as (1) “the data that appears between the starting and ending tags of an element in an SGML, XML, or HTML document. The content of an element may consist of plain text or other elements,” (2) “The message body of a newsgroup article or e-mail message;” and (3) “The ‘meat’ of a document, as opposed to its format or appearance.”); see also content, WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY, 142 (2004) (Ex. 3001) (“Information, especially that which is available online, which may be any combination of text, audio, video, files, or the like.”). Accordingly, under the broadest reasonable interpretation in the context of the Specification and the surrounding claim language, we conclude that “content” is data or information, which has been modified and is received over a network.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“first function.” The Specification, however, does use the phrase “function call” to state that “before the client computer invokes a function call that may potentially dynamically generate malicious code, the client computer passes the input to the function to the security computer for inspection.” Ex. 1001, 4:3743 (emphasis added). The Specification also states that “the present invention operates by replacing original function calls with substitute function calls within the content, at a gateway computer, prior to the content being received at the client computer.” Id. at 4:5760. Therefore, we understand the Specification to use the phrase “function call” in the same sense as the phrase “call to a [] function.” That is, a program instruction specifies the function name and its parameters, where execution of the instruction results in the function providing a service. Thus, we find the dictionary definition of the term “function call” applicable here and indicative of the meaning of the term to a person of ordinary skill in the art.” slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Id. (displaying a stamp labeled “Engineering Periodicals, University of Washington, Jan 31, 2000”). Additionally, the cover page includes a label stating “Engineering Library Display Periodical Noncirculating until: Mar 08 2000.” Id. The stamps and labels are described by Mr. Melvin (“Mel”) DeSart, Head of the University of Washington Engineering Library, as evidence that the Library’s process was to stamp a received periodical and to affix a label when the periodical was chosen for display at the Engineering Library Display Periodicals area. Ex. 1036 ¶ 2. According to DeSart, the stamp and label convey that the article was received (and, therefore, stamped) at the University of Washington Libraries, on January 31, 2000, and was redirected to the Engineering Library, where it was added to the display and made “publicly available” from February 8, 2000 until March 8, 2000. Id. ¶ 3. We credit DeSart’s testimony regarding the normal business practices of the Library at which he is employed since March 2000. Id. ¶ 1. His opinion is based on personal knowledge of these business practices and his familiarity with the Library’s business records. Id.; Ex. 2006, 14:515:20. The copy of the article, with the first page we discuss above, is a copy of the periodical maintained by the Library in its ordinary course of business, and is authenticated as such. Id. ¶ 3. Further indicia of publication supports our determination that Sirer is a printed publication. The copyright page of the Library copy provides for limited rights to copy and “republish” with permission and/or a fee by contacting the publications department of ACM. Id., 5. That page also includes an ACM ISBN number (1-58113-140-2) and instructions on how to order additional copies, information which is also included in the footer of Exhibit 1004, indicating that copies of the periodical were available from ACM without restriction. Id. Therefore, based on the foregoing, we conclude that Sirer is a printed publication. Moreover, considering the dates on the face of the article, the circumstances surrounding the receipt of the periodical at the library, and the business practice of circulating periodicals at the Engineering Library, we determine that Sirer’s date of publication is evident as of February 8, 2000, when the Library would have displayed the periodical, and as early as January 2000, when a subscriber to the periodical, such as the Library of Washington, would have received the periodical.12 See Ex. 2006, 17:615 (DeSart testifying that journals published by ACM were received directly from the publisher under a subscription); 21:2222:8.” slip op. at 25
- Skill levelSkill level board ownOther
“level of ordinary skill that is different from Petitioner’s. Ex. 2002 ¶ 35. In Particular, Dr. Medvidovic opines that a person of ordinary skill in the art would have a “bachelor’s degree in computer science or related field, and either (1) two or more years of industry experience and/or (2) an advanced degree in computer science or related field.” Id. In comparison, it appears that the minimum experience under Patent Owner’s proffered level of skill is one year less than Petitioner’s. Also, Patent Owner proffers an alternative to work experience, namely an advanced degree. There is no specific articulation regarding how the difference of one year experience or the proposed alternative of an advanced degree in lieu of experience tangibly affects our obviousness inquiry. Further, there is no evidence in this record that the differences noted above impact in any meaningful way the level of expertise of a person of ordinary skill in the art. Indeed, we note that Dr. Medvidovic’s opinions would not change if he had considered instead the level or ordinary skill in the art proffered by Dr. Rubin. Id. ¶ 38. Accordingly, we determine that in this case no express definition of the level of ordinary skill in the art is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 17
Patent outcomesUS 8,141,154 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,141,154
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.