- Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33
Patent outcomesUS 6,917,986 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,917,986 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Jul 22, 2025 · IPR2025-00255 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that claims 1, 23, and 27 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Summary For the reasons discussed above, Petitioner has made sufficient showings at this stage of the proceeding that the Wilcox-Londergan-Raskin- Wu combination teaches or suggests every limitation in claims 1, 23, and 27 of the ’139 patent, that one of ordinary skill in the art would have had reason to combine those teachings and suggestions to arrive at the inventions recited in claims 1, 23, and 27, and that one of ordinary skill in the art would have had a reasonable expectation of success. Accordingly, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges to claims 1, 23, and 27 based on the combination of Wilcox, Londergan, Raskin, and Wu. Accordingly, institution of an inter partes review is appropriate under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Dr. Terveen has provided its own definition . . . . 31. I believe Dr. Terveen’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“missing in the prior art. Prelim. Resp. 29–34. Limitations [1.4], [23.5], and [27.4] each recite: “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 29:47–49, 31:33–35, 32:29–31. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a Boolean AND operator and/or a comma).” Pet. 25–26 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’139 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31; compare Ex. 1001, 30:19–22 (claim 6, “string separator character”), with id. at 31:22–26 (claim 22, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues:” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“one of ordinary skill in the art would have considered “reverting some of the changes that had been made to Lotus Notes R5’s ‘Search Builder’ to make it more similar to Lotus Notes earlier 3.0’s ‘Query Builder.’” Prelim. Resp. 16. The issue, however, is not whether “over the years Lotus Notes moved away from a unified search field[,]” as Patent Owner suggests. Id. at 14. The issue is what “inferences and creative steps” a person of ordinary skill in the art would have employed, based on Wilcox and Londergan, when designing a new method and system for search indexing. KSR, 550 U.S. at 418. Petitioner’s argument is that one of ordinary skill in the art would have been motivated to consider Wilcox and Londergan together in order to “obtain a more complete and comprehensive understanding of the Lotus Notes system,” which in turn would have inspired certain inferences and creative steps that would have resulted in the portions of the claimed invention allegedly disclosed in Wilcox and/or Londergan. Pet. 22. We do not agree with Patent Owner that this argument can only be the result of improper hindsight bias. See Prelim. Resp. 16–17. At this stage of the proceedings and based on the current record, we determine that Petitioner has sufficiently shown that a POSITA would have been motivated to combine Wilcox and Londergan.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,633,139 - PTAB · Jul 22, 2025 · IPR2025-00254 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1–20 are unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute an inter partes review of claims 1–20 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’490 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“art. Prelim. Resp. 30–34. Limitation [1.10] reads, “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 30:8–10. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 23–24 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.16 Consequently, based on the current record, for the purposes of this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing. If Boolean modifiers are excluded from the definition of a “string separator character,” then the Londergan Search Bar and Search Builder features, which accept only Boolean operators, do not teach or suggest 16 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’490 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 32; compare Ex. 1001, 31:14–17 (claim 12, “string separator character”), with id. at 32:19–23 (claim 20, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 32 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the search incrementally to use a single-character string separator character, such as a plus sign, as was known in the art (e.g., EX1057, 60, 109, 129, 151), or a comma, as described by the Lotus Notes references (EX1059, 159-165), at least because a POSITA knew that a goal of the incremental search is to minimize the number of characters the user has to enter before obtaining the desired search results. Pet. 24 n.7. limitation [1.10].17 See Ex. 1061, 140–42. The Wilcox Search Bar similarly is limited to strings separated by a Boolean operator. See Ex. 1059, 160–62. The Wilcox Query Builder, however, does teach multiple search strings separated by a string separator character, specifically a comma. Id. at 163 (“If you want to search for documents that contain all of several words, type them in this box, separated by commas.”). Thus, while we do not accept all of Petitioner’s reasoning, there is evidence to support Petitioner’s overall argument that the proposed combination discloses multiple search strings separated by a string separator character, as we have preliminarily construed the term.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“extreme technical difficulties with even using incremental searches.” Prelim. Resp. 21, 25 (citing Ex. 1021, 126). Patent Owner argues that “[a] POSITA is not motivated to undertake a modification of the prior art with something that the art teaches would be difficult or impossible to do.” Id. at 21 (citing Natera, Inc. v. NeoGenomics Labs., Inc., 106 F.4th 1369, 1377–78 (Fed. Cir. 2024)). We do not interpret Raskin in this manner. Patent Owner points to a passage in Raskin stating, “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.” Ex. 1021, 126. There is a difference, however, between “difficult to implement” and “difficult to use.” For the end-user, Raskin concludes that “[f]rom the point of view of interface engineering, the advantages of incremental searching are so numerous and the advantages of delimited searches so few that I can see almost no occasions when a delimited search would be preferred.” Id. at 126 & n.7 (“A search is either incremental or excremental.”). It is reasonable to conclude that one of ordinary skill would have been motivated to choose a search method that offered numerous advantages to end-users. Finally, Patent Owner argues that “Raskin’s entire philosophy to user interfaces was incompatible with Lotus Notes.” Prelim. Resp. 22–25. According to Patent Owner, “Lotus Notes is all about centralized collaboration around documents, files, and file structures[,]” while Raskin “goes in a completely different direction, espousing the elimination of filenames and ‘hierarchical file structures’ including directories and folders.” Id. at 23 (citing Ex. 1021, 119). Patent Owner claims that modifying the Lotus Notes references with Raskin would “effectively render[] Lotus Notes’ functionality of hierarchical viewing of and responding to documents unusable.” Id. Petitioner, however, does not propose to incorporate Raskin’s views on hierarchical file structures into the combination of Wilcox and Londergan. It is not necessary for the entirety of Raskin’s teachings to be physically compatible with the Lotus Notes systems described in Wilcox and Londergan. Orthopedic Equip., 702 F.2d at 1013 (“Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”); In re Sneed, 710 F.2d at 1550. Raskin is cited for one purpose: its teachings regarding incremental search. On the current record, we find Petitioner has demonstrated that one of ordinary skill would have been motivated to modify the combination of Lotus Notes references according to those teachings in Raskin. slip op. at 23
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,552,490 - PTAB · Jul 22, 2025 · IPR2025-00253 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 1–10 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 10 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“in the prior art. Prelim. Resp. 30–34. Limitations [1.4] and [10.4] both recite: “wherein the first and second strings are separated by a string separator character in the first search field.” Ex. 1001, 29:44–46, 30:41–43. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 26–27 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the current record, for the purposes of 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’035 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31 (citing Ex. 1001, 8:45–59, 22:34–46). Moreover, Patent Owner persuasively argues that “a POSITA would not have understood Boolean operators like AND to be a string separator as used in the claims” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 109). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“based on the fact that all three references “generally relate to searching.” See Prelim. Resp. 20. The fact that Raskin does not explicitly discuss searching across multiple files does not mean that there would be no motivation to combine Raskin with the Lotus Notes references. Although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine or modify the known elements in the manner proposed, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We conclude on the current record that Petitioner’s rationale for combining Raskin with the Lotus Notes references is not over-broad.” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,370,035 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-00343 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Rădulescu2004 and OCP; the Board did not reach the Weber-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“35 U.S.C. § 112 ¶ 6 (2006). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part); Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998). “[This] presumption may be rebutted if the properly construed claim limitation itself recites sufficiently definite structure to perform the claimed function.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1361 (Fed. Cir. 2000).” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner
“Ex. 1001, 4:46–50. This passage indicates that the interconnect can be a network on a chip and the network on a chip can include wires and buses. That does not necessarily mean that the interconnect can be just wires or buses; rather, it discloses that the interconnect can include wires and buses. In context, the disclosure regarding wires and buses does not support construing the corresponding structure broadly enough to encompass just wires and buses. The networks that constitute the corresponding structure, however, could include networks with wires and buses. Therefore, we agree with Patent Owner that the corresponding structure for the interconnect means should not include a mere bus, switch, and point-to-point wire and instead find that the corresponding structure under 35 U.S.C. § 112 ¶ 6 is a network, which the ’052 patent describes as a multi-hop interconnection between modules separated by one or more network nodes. See Ex. 1001, 2:33–37. Because this structure corresponds to the construction of “interconnect means” proposed by Patent Owner and adopted by the district courts in the TI and Qualcomm litigations (see supra Section III.C.3.b), and we do not rely in our analysis below on a recourse to “equivalents thereto” as permitted by § 112 ¶ 6, we note that our ultimate conclusions on the unpatentability of the challenged claims would be the same if § 112 ¶ 6 did not apply. iii. Conclusion For the reasons stated above, we construe “interconnect means” to cover the structure described in the Specification corresponding to the specified functions of “coupling said plurality of processing modules (M, S)” in the context of claim 6 and “coupling said plurality of processing modules (M, S)” and “enabling a connection-based communication having a set of connection properties” in the context of claims 1 and 7—i.e., a “multi-hop interconnection between modules separated by one or more network nodes”—and equivalents thereof.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Patent outcomesUS 7,594,052 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,594,052 - Qualcomm Incorporated v. Network System Technologies, LLCAll claims unpatentablePTAB · Jun 13, 2025 · IPR2024-01081 · APJ Steven M Amundson · IPR · Final written decision
Claims 2, 6, and 9–16 are unpatentable as obvious over Goossens2003 and Drake; the Board did not reach the Goossens2002 and Drake challenge.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“3. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF” slip op. at 54
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Qualcomm”) filed a petition in IPR2024-01081 challenging claims 2, 6, and 9–16 in the ’449 patent on substantively identical grounds to those asserted in Samsung’s Petition. Qualcomm Incorporated v. Network System Technologies, LLC, IPR2024-01081, Paper 1 (“Pet.”).2 Concurrently with filing the petition in IPR2024-01081, Petitioner filed a motion for joinder, seeking joinder as a party in this proceeding under 35 U.S.C. § 315(c). IPR2024-01081, Paper 3. slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“IV. JOINDER AND THE ONE-YEAR TIME BAR IN § 315(b) Regarding joinder, § 315(c) permits joinder as a party and states:” slip op. at 157
- ExcludeOther
“In our analyses above, we do not rely on any of the evidence that Petitioner seeks to exclude. See, e.g., supra §§ III.C–III.E. Hence, we dismiss Petitioner’s motion to exclude evidence as moot. See, e.g., Netflix, Inc. v. GoTV Streaming, LLC, IPR2023-00757, Paper 39 at 135 (PTAB Nov. 5, 2024) (dismissing motion to exclude evidence as moot); Volkswagen Grp. of Am., Inc. v. Spero, IPR2023-00335, Paper 40 at 24 (PTAB July 15, 2024) (dismissing motion to exclude evidence as moot).” slip op. at 159
Patent outcomesUS 7,373,449 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449
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.