- Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentablePTAB · Nov 20, 2023 · IPR2023-00408 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the Jo-Wu or Jo-Wan obviousness grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“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))). Neither party seeks express constructions of any claim terms. See Pet. 20; see generally PO Resp. We do not need to provide an express construction for any claim terms for purposes of resolving the controversy before us. slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17
Patent outcomesUS 8,615,700 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Western Digital Technologies, Inc. / Kioxia Corporation et al. v. Viasat, Inc.Some claims unpatentablePTAB · Nov 20, 2023 · IPR2022-01126 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 4, 8, 15, 17, and 19 are unpatentable as anticipated by Wu; claim 2 was not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Kioxia Corporation and Kioxia America, Inc. filed a petition and a motion for joinder in IPR2023-00408 and have been joined as petitioners to this proceeding. INTRODUCTION A. Background and Summary Western Digital Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) seeking an inter partes review of claims 1, 2, 4, 8, 15, 17, and 19 (the “challenged claims”) of U.S. Patent No. 8,615,700 B2 (Ex. 1001, “the ’700 Patent”). Viasat, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”). We instituted an inter partes review. Paper 13 (“Institution Decision” or “Inst. Dec.”). Kioxia Corporation and Kioxia America, Inc. (collectively, “Kioxia”) filed a substantively identical petition, and we granted institution and joined Kioxia as a petitioner to this proceeding. Paper 25 (copy of Paper 9 from IPR2023-00408).” slip op. at 1
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ articulations of the level of ordinary skill in the art are similar, and we adopt parts of each party’s description of a POSITA’s education and experience. We agree with Patent Owner that computer engineering is a relevant field of study. PO Resp. 3. Our finding is supported by the ’700 Patent, which describes systems, devices, methods, and software for forward error correction for a flash memory system, which may be integrated with a computer, server, or other computing device. Ex. 1001, 3:23–30. We adopt Patent Owner’s proposal regarding the length of a POSITA’s practical experience—two years—rather than four years, as proposed by Petitioner. Neither Petitioner nor Dr. Dolecek assert that two years of practical experience would have been insufficient to acquire POSITA’s experience would have been limited to “hardware implementation.” PO Resp. 3. Our finding is supported by the ’700 Patent, which states that “embodiments may be implemented by hardware, software, firmware, middleware, microcode, hardware description languages, or any combination thereof.” Ex. 1001, 10:26–28. Petitioner’s assertion that a POSITA needs to have experience in “error correction coding (‘ECC’) systems (which include forward error correction or ‘FEC’systems)” (Pet. 19; Ex. 1003 ¶ 25) is consistent with the ’700 Patent, which discloses methods, systems, and devices for forward error correction for flash memory. Ex. 1001, code (57); see also Ex. 1003 ¶¶ 57, 66 (explaining that error correction coding (“ECC”) includes forward error correction (“FEC”)). For these reasons, we find that a POSITA would have had a bachelor of science degree in electrical engineering, computer engineering, or computer science or a related field, and two years of experience designing, developing, or researching error correction coding systems, which include forward error correction systems.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“arrows between scrambler 103 and ECC Engines 822-0 to 822-M in Wu’s Figure 8 is sufficient to disclose the generation of a plurality of data streams, as claimed. Pet. 36–37; Pet. Reply 2–6. As between Petitioner’s position that the multiple arrows in Wu’s Figure 8 represent multiple data streams (Pet. 36–37; Pet. Reply 2–3), and Patent Owner’s position that “those arrows are not meant to be taken literally as literal data streams” (Tr. 35:16–17), we find that Petitioner’s position is more reasonable, consistent with the legal standard for anticipation, and amply supported in the record. “In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (citing Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1192 (Fed. Cir. 2003)). “Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” Id. (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 878 F.3d 1336, 1345 (Fed. Cir. 2018)).” slip op. at 17
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that Dr. Dolecek’s testimony about Wu’s Figure 8 and a “plurality of data streams” is more credible than Dr. Bagherzadeh’s testimony on this topic. Dr. Bagherzadeh testifies that Wu’s scrambler “does not split, copy, or otherwise ‘generate a plurality of partially decoded data streams.’” Id. ¶¶ 100, 108. But that testimony fails to take into account what the depiction of multiple double-sided arrows in Wu’s Figure 8 would have meant to a POSITA, as Dr. Dolecek testifies. Ex. 1003 ¶ 86 (reproducing Wu’s Figure 8 with double-headed arrows between ECC engines 822-0 to 822-M and scrambler 103 shaded yellow to identify a “plurality of partially decoded data streams”). The evidence does not support Dr. Bagherzadeh’s opinion that Wu’s Figure 8 is “incompatible” with Wu’s description and “there’s no way to generate a plurality of data streams from the Scrambler to the ECC Engines.” Ex. 2023 ¶ 109. As Dr. Dolecek explained below, when viewed through the eyes of a POSITA, Wu discloses that the scrambler can generate a plurality of data streams. After quoting from Dr. Dolecek’s deposition testimony (Ex. 2023 ¶ 107 (quoting Ex. 2024, 32:15–22)), Dr. Bagherzadeh asserts that “Dr. Dolecek does not explain how she believes the intra-channel operation of the Scrambler on the ‘one long data stream’ it receives could generate a account Dr. Dolecek’s testimony in response to follow-up questions from Patent Owner. Q So you have found the plurality of data streams in the three arrows of Figure 8 going from the scrambler to the ECC engines? A Yes. . . . Q And how exactly, in your understanding as a person of skill, does the scrambler generate that plurality? . . . THE WITNESS: . . . So the person of ordinary skill in the art would understand that these are multiple arrows here indicated explicitly to suggest parallel operations of the ECC engines. And for them to have parallel operations, a person of ordinary skill in the art would assume that they are receiving inputs at the same time, and the scrambler would, for example, do that by sending descrambled data to different engines at a time, one at a time. . . . Q So how does the scrambler’s function of intrachannel rearrangement generate multiple data streams? . . . THE WITNESS: Once it’s descrambled on a per-block basis, it simply sends that block to a given engine, ECC engine. . . . Q Can the scrambler send out multiple data streams in parallel at the same time? A If it’s designed like that, yes. Ex. 2024, 32:24–34:7 (objections and witness’s false start omitted). Q So describe for me how in Figure 8 that would work for your analysis where the scrambler receiving the data from the multiplexer would then generate the plurality of partially decoded data streams. A Right. Figure 8. So if it receives a long string of data that has already been processed by the 104 unit, it would perform intra- -- intrachannel, if you will, intrablock disarrangement of data. And then it could” slip op. at 18
Patent outcomesUS 8,615,700 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,615,700 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCInstitution deniedPTAB · Oct 23, 2023 · IPR2023-00694 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 23, 29, or 30 obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, deny the Petition and do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems and solutions in the ’330 patent and the prior art of record, on balance, Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we, therefore, adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe this term to resolve a dispute.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“In light of the analysis of the patentability of the claims that follows, and having considered the positions of the parties, we find that for the dispute. See Vivid Techs., 200 F.3d at 803, supra. C. Other Terms We determine there are no other claim terms that need to be construed for this decision.” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,010,330 - PTAB · Oct 6, 2023 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds, finding a reasonable likelihood that Keenan anticipates the claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’366 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’366 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the earliest effective filing date of the ’366 patent: would have had a Bachelor’s degree in computer engineering, computer science, mathematics, or a similar discipline, with at least three years of relevant industry or research experience, including experience in software development and designing or implementing threat models. Additional work or research” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe 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))). Petitioner proffers constructions for four terms, namely, (1) “third party software application,” (2) “third party diagram components,” (3) “visual representations of the threat model components,” and (4) “threat model components,” each as recited, for example, in independent claim 1. Pet. 12–14. Petitioner submits “[Patent Owner] defined [these] claim terms in the specification and file history,” “Petitioner is applying those definitions in this petition,” and “[f]or all other claim terms, Petitioner applies the plain and ordinary meaning that a [skilled artisan] would attribute to those terms.” Pet. 12. “Patent Owner submits that the Board need not engage in any pre-institution claim construction of these [four] terms.” Prelim. Resp. 11. Based upon our consideration of the record at this stage of the proceeding, we conclude that it is unnecessary to interpret expressly any term in the ’366 patent claims for which we institute inter partes review. See Nidec, 868 F.3d at 1017. Nevertheless, we determine that briefing during the trial on the proper interpretation of certain claim terms may assist us in resolving issues presented in this case. In particular, we invite the parties to address the proper construction of “threats,” “threat model components,” “visual representations of the threat model components,” and “mapping files,” and the evidentiary support therefor. To the extent that a party proposes that such a term should have its ordinary and customary meaning, we encourage the party to explicitly identify such meaning(s) and the evidentiary support therefor.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“does not disclose the “threats” described and claimed in the ’366 patent. See Prelim. Resp. 5–7, 11–19. Based on the record before us at this stage of the proceeding, we disagree and preliminarily find Patent Owner’s arguments unavailing, as further discussed below. In particular, Patent Owner concedes that “Keenan discloses that color can ‘represent different types of risk (e.g., cyber, environmental, accidental, etc.),’” where Keenan displays such colors associated with objects in a topology. Prelim. Resp. 17 (citing Ex. 1004, 16:40–51) (emphases added); see Ex. 1004, Fig. 7. But Patent Owner then merely concludes, without citing any factual support, that “use of a color identifying the generic nature of a risk still fails to disclose any threats associated with the risk.” Id. at 17– 18. On the other hand, Petitioner’s expert, Mr. Hurlbut, testifies: Keenan demonstrates that its risk measurement and display includes a determination of threats where Keenan discloses a risk measurement view that uses [] color to “represent different types of risk (e.g., cyber, environmental, accidental, etc.).” [Ex. 1004], 16:40–51. [The skilled artisan] would understand that “types of risk,” as disclosed in Keenan are threats because the described examples are all types of threats (cyber, environmental, accidental). Thus, Keenan discloses threats within its risk analysis. Moreover, [the skilled artisan] would understand that risk is a function of threats exploiting vulnerabilities to obtain, damage, or destroy assets. In other words, threat modeling is used to identify risk. Ex. 1003 ¶ 79 (cited at Pet. 21–24); see id. ¶ 82 (cited at Pet. 26–28). Patent Owner disputes this testimony of Mr. Hurlbut using only attorney argument, and without telling us, for example, why Mr. Hurlbut allegedly is wrong (e.g., by explaining why specific “types” of risk do not fall within the scope of “threats” as broadly recited in claim 1, or how “risk” is not a function of “threats” in Keenan, as explained by Mr. Hurlbut). See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Moreover, although Patent Owner characterizes the “types of risk” disclosed in Keenan as identifying a “generic nature of a risk” (Prelim. Resp. 17–18 (emphasis added)), we note that “threats” is broadly recited in claim 1 with no requirement as to any level of specificity of such threats.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,366 - Ericsson Inc. v. Koninklijke KPN N.V.Institution deniedPTAB · Sep 12, 2023 · IPR2023-00583 · APJ Kevin F Turner · IPR · Institution
Institution was denied because the petition did not show a reasonable likelihood that claims 1–7, 22–26, 28, 29, 31, and 32 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. §314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we deny institution of an inter partes review of the ’705 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art would have had “a[t] least a bachelor’s degree in electrical engineering or a related field, and two years of experience working with wireless networks, and related technologies.” Pet. 12–13 (citing Ex. 1002 ¶¶ 59–61). Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 27. We adopt Petitioner’s description for purposes of this Decision. B. Claim Construction” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “given the close correlation and substantial identity between the references and the ’705 Patent the Board need not construe any of the terms to resolve the underlying controversy, as any reasonable construction reads on the prior art.” Pet. 12. Patent Owner submits that the terms recited in the Challenged Claims can each be given its” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“equivalence of optimizing a parameter, such as in Madebrink and Feuerstein, with the claimed “a deviation from the setting requirement based on an operational requirement deduced from the use of the radio network.” Prelim. Resp. 29. Patent Owner’s declarant testifies that there is no equivalence between optimizing a parameter and checking a parameter on the basis of a rule having a deviation from a setting requirement. Ex. 2008 ¶ 120. We agree with Patent Owner. Petitioner does not present specific evidence indicating that Feuerstein’s teaching of optimizing a parameter for a given environment is the same as checking the parameter on the basis of a rule comprising a deviation from a setting requirement. See Pet. 17–26. In fact, the evidence of record indicates that optimizing a parameter does not necessarily require checking the parameter against a rule. Ex. 2008 ¶ 120 (“the ‘rule’ recited in [1a] may reject verification of a modified network parameter even if it has been optimized”). We further agree with Patent Owner that Madebrink and Feuerstein teach optimization based on live traffic, and not based on a “rule,” per se. Prelim. Resp. 30–31 (citing Ex. 2008 ¶ 122).” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,092,705 - Bank Of America, N.A. / Truist Bank et al. v. Dynapass IP Holdings LLCInstitution deniedPTAB · Jul 18, 2023 · IPR2023-00367 · APJ Lynne H Browne · IPR · Institution
The Board denied institution because neither asserted obviousness combination showed a reasonable likelihood of prevailing on claims 1–3 and 5–7.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we conclude that the Petition fails to establish that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–3 and 5–7 of the ’658 Patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we deny institution of an inter partes review as to the challenged claims of the ’658 Patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s first articulated reason in support of the proposed combination lacks rational underpinning because 9 Here and throughout the remainder of this Decision, citations to references that are not the basis for the challenge being discussed are omitted. Sormunen does not support the premise that cellular networks and SMS messaging are more secure than computer networks.” slip op. at 15
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We agree with Patent Owner that Petitioner does not provide adequate support for its assertion that challenge requests via mobile station are more secure than challenge requests that rely on a user account ID. Petitioner identifies no such teaching in Guthrie or Sormunen. Further, we agree with Patent Owner that Dr. Reiher’s testimony amounts to no more than a restatement of Petitioner’s argument in the Petition without the support of additional evidence. We, therefore, give this testimony little weight. Xerox, IPR2022-00624, Paper 9 at 15–16.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that A person of ordinary skill in the art (“POSITA”) would have at least a bachelor’s degree in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and at 1 US 6,161,185 to Guthrie et al., issued December 12, 2000 (“Guthrie”) (Ex. 1007). 2 WO 97/31306, published August 28, 1997 (“Sormunen”) (Ex. 1008). 3 In accordance with the English translation, the inventor is Katou, not Kato. 4 JP 2000-10927 to Katou, published January 14, 2000 (“Katou”) (Ex. 1005). For purposes of this Decision we rely on the English translation of Katou (Ex. 1006). least two years of prior experience with user authentication technologies for computer systems as of the earliest priority date of the ’658 Patent—March 6, 2000. Additional education could substitute for professional experience and vice versa. Pet. 3–4 (citing Ex. 1002 ¶ 23). “For the purposes of [the Preliminary] Response only, Patent Owner does not dispute the level of skill of a person of ordinary skill in the art (‘POSITA’) identified in the Petition.” Prelim. Resp. 10. Based on the record presented, including our review of the ’658 patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,993,658 - Apple Inc. v. Rfcyber Corp.No claims unpatentablePTAB · Jul 18, 2023 · IPR2022-00412 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–19 were not shown unpatentable because the Dua, GlobalPlatform, and Philips combination did not establish the claimed emulator personalization.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the full record before us, we agree with Petitioner that a person of ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa.” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for patent owner
“ordinary skill in the art should have some level of experience relating to mobile payment technology. For example, the title of the ’787 patent, “Method and Apparatus for Conducting E-commerce and M-commerce,” provides a strong indication that mobile payments are a key aspect of the disclosed invention. See Ex. 1001, code (54). The ’787 patent describes its technical field as: “The present invention is generally related to commerce over networks. Particularly, the present invention is related to electronic purses that can be advantageously used in portable devices configured for both electronic commerce (a.k.a., e-commerce) and mobile commerce (a.k.a., m-commerce),” which reinforces that mobile payment technology is a key aspect. See id. at 1:17–21. In addition, we credit Mr. Smith’s uncontroverted testimony that mobile payment experience is required, which we find persuasive and supported by evidence. See Ex. 1042 ¶¶ 4–10. On the other hand, we agree with Patent Owner that network security is an important aspect of the ’787 patent’s invention. But to the extent that Patent Owner is asserting that mobile payment technology and computer or network security are distinct concepts such that the proper level of ordinary skill would include experience in one or the other but not both, we disagree. Rather, we view the ’787 patent as relating to methods and apparatuses for 1:17–21) and describing security as being an aspect of the commerce (see id. at code (57) (“[A] mechanism is provided to enable a portable device to conduct transactions over an open network with a payment server without compromising security.”), 2:16–19 (“During a transaction, the security keys are used to establish a secured channel between an embedded e-purse and an SAM (Security Authentication Module) or backend server.”)). For the above reasons, we find Petitioner’s contentions on this issue more persuasive on the full record before us. In order to avoid any doubt that we consider computer or network security to be an element of mobile payment technology, we determine for the purposes of this Decision that one of ordinary skill in the art would have at least a Bachelor’s degree in computer science, computer engineering, electrical engineering or an equivalent, and one year of professional experience relating to mobile payment technology, including computer or network security. In addition, a lack of professional experience could be remedied by additional education, and vice versa. Regarding Petitioner’s assertion that Mr. Gomez’s testimony should be given little to no weight, Patent Owner argues that Mr. Gomez is well qualified under both proposed levels of ordinary skill. Sur-reply 4–5. During the hearing, Petitioner modified its position somewhat, arguing that Mr. Gomez’s “testimony should be accorded little to no weight, particularly where he weighs in on issues specific to financial transactions and smart cards.” Tr. 8:15–18 (emphasis added). Petitioner stated further that “[w]e’re simply asking the Board to take into the account each individual expert’s background knowledge on a per issue basis.” Id. at 59:26–60:2. Based on the full record, we disagree that all of Mr. Gomez’s testimony” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms, except “emulator” and “midlet,” should have their plain and ordinary meaning. Pet. 12. As to the claim terms “emulator” and “midlet,” Petitioner contends that the ’787 patent expressly defines those terms “so those definitions are controlling.” Id. (citing Ex. 1001, 4:47–50, 5:20–22). Patent Owner argues that “claim construction is not required to resolve any issues” in this proceeding. PO Resp. 9. We determine that we need not expressly construe any claim term to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also 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” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
Patent outcomesUS 9,189,787 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,189,787 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · Jun 7, 2023 · IPR2023-00098 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 1–35 unpatentable, including the limitation requiring asking the requesting device whether to request access rights.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“3. Conclusion Regarding Claim 1 We determine Petitioner has not shown a reasonable likelihood that it would prevail in its challenge to independent claim 1.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering or a similar degree with one or two years of experience with wireless networks and devices, as well as with GPS or location-related technology/services, as well as familiarity with devices such as cell phones and personal digital assistants (“PDAs”) as well as wireless positioning technologies such as GPS, triangulation, or trilateration. Pet. 7 (citing Ex. 1021 ¶ 43). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2021). Under that precedent, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13. Neither party proposes any explicit claim constructions. Pet. 8; see generally Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Contrary to Petitioner’s arguments, though, neither Sheha nor Ganesh discloses or suggests asking the requesting device if location access rights are to be requested from the target device. Sheha teaches that “a [requesting] user can initiate a position request” and “[t]he server queries the [target user] for permission on whether the position request can be granted.” Ex. 1041, 5:24–31. Sheha does not teach asking the requesting user if location access rights are to be requested.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,635,540 - Apple Inc. v. Mullen Industries LLCInstitution deniedPTAB · May 15, 2023 · IPR2023-00117 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood that claims 42–72 were unpatentable over either asserted § 103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’117 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor of science degree in computer science, computer engineering, electrical engineering, or a similar degree with one or two years of experience with wireless networks and devices, such as cell phones and personal digital assistants (‘PDAs’) and wireless positioning technologies such as GPS.” Pet. 9 (citing Ex. 1021 ¶¶ 42–45). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any explicit claim constructions, and asserts that “[t]he claim terms of the ’117 Patent are construed under the Phillips standard, considering the plain meaning of the claim terms to a person of ordinary skill in the art, in light of the language of the claims, the specification, and the file history.” Pet. 9. Patent Owner too does not propose any explicit claim constructions. See Prelim. Resp. At this stage, we determine it is unnecessary to construe any terms. 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 not foundNot shown unpatentableNot shown unpatentable
“that “a user can initiate a position request” from a remote server. Pet. 29 (citing Ex. 1041, 5:24–29, 11:55–58, claims 47, 54; Ex. 1021-7 ¶ 131). Petitioner cites the same disclosure, though, to argue “Sheha discloses requesting access rights from a wireless device” for limitation 42.e and 42.f. Pet. 29–30, 32 (citing Ex. 1041, 5:21–32; Ex. 1021-7 ¶¶ 132–136). To be sure, the cited portion of Sheha refers to only a single act performed by the requesting user: “a user can initiate a position request.” Ex. 1041, 5:24–25. We agree with Patent Owner that the cited portion of Sheha does not teach or suggest separate steps of a user requesting a location and the same user requesting location access rights. Petitioner’s reliance on Ganesh does not cure that deficiency. Petitioner and Mr. Williams cite Ganesh for its teachings of a “denial webpage” which presents to the user an option to receive the requested location at a later time. Pet. 30–31 (citing Ex. 1049, 6:33–49, Fig. 6; Ex. 1021–7 ¶ 134 (stating “Ganesh . . . illustrates examples of such conventional functionality of providing an option to request access rights via a display screen”)). Ganesh, however, does not address requesting location access rights; Ganesh describes an access denial web page provided following an unsuccessful attempt to obtain location information that asks whether the user would like to receive the location information at a later time, not prompting the user to request location access rights. Ex. 1049, 6:33–49, Fig. 6. In other words, neither Sheha nor Ganesh teaches or suggests displaying to a user an option to request location access rights, as a separate step from requesting a location of a second wireless device from a server. Thus, based on the evidence of record, we determine the Petitioner has not adequately shown that a person of ordinary skill would have combined Sheha and Ganesh to arrive at the claimed invention without improper hindsight.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,234,117 - Ericsson Inc. v. Koninklijke KPN N.V.No claims unpatentablePTAB · May 12, 2023 · IPR2022-00069 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 11, 12, 26, and 27 were not shown unpatentable under either § 103 ground because Petitioner did not establish motivation to modify Obhan to deny network attach.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Ex. 1005, 6:5–16 (emphasis added); see also Ex. 2016 ¶ 95. However, even assuming that Petitioner is correct, and denying network attach is one of a finite number of ways to deny access, this is not sufficient to show that denying access would be accomplished through denying network attach in Obhan’s system. In other words, Petitioner’s proposed rationale is too general, and is untethered from the disclosure in Obhan.” slip op. at 27
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“registered subscribers, or renders it impossible to modify Obhan’s system to deny attach of nonregistered users”). Petitioner also attempts to broaden Obhan’s disclosure to include unregistered subscribers by arguing that Obhan’s discussion of registered subscribers is not in the context of denying access, but rather, is only in the context of monitoring network load. See Reply 22; Tr. 16:6–11, 20:18–20. However, Petitioner fails to provide persuasive support that Obhan is concerned with unregistered subscribers in any context. Petitioner cites to deposition testimony from Mr. Obhan and Dr. Pachamanov (Reply 21), purportedly supporting that the Obhan reference is not limited to any particular type of subscriber, but we do not find the cited testimony persuasive, particularly in light of what the Obhan reference discloses. Although Petitioner is correct that Obhan does not expressly state that it is only concerned with registered subscribers (Reply 21), we are not persuaded that silence implies that unregistered subscribers are a consideration in Obhan. See International Bus. Machines Corp. v. Iancu, 759 F. App’x 1002, 1010–12 (Fed. Cir. Apr. 1, 2019) (unpublished) (concluding that the fact that a reference was silent on an issue “would not alone support a finding that there was no user authentication action in this scenario . . . . Silence in that sense would not by itself suffice for the Petitioner to meet its burden to prove, by a preponderance of the evidence, that there was no user authentication action in this scenario. Nor would that burden be met merely by adding a finding that [the patent owner] did not prove the opposite, i.e., a finding of ‘the absence of sufficient evidence showing the provision or validation of a set credentials at the partner site’ in this scenario.”) Rather, Obhan’s disclosure (described in detail above in Section III.D.1) supports that Obhan is concerned with registered subscribers. For example, Obhan tracks spectrum usage in real-time, measuring both real-time usage of active subscribers, and potential usage of inactive subscribers that have registered with the network. Ex. 1005, 2:38–42. This information is delivered to an ACB, and is used in order to enforce operating rules over each corridor, such as limiting access to certain classes of subscribers or certain services during particular operating periods. Id. at 2:62–3:39, 5:32–65, 6:5–16, 11:35–50, 14:13–20, 14:64–15:3, 15:45–16:22, Figs. 9A, 9B. In other words, in Obhan’s system, registered subscribers create the actual and potential demand that contributes to limiting access to subscribers. Petitioner does not provide persuasive evidence that unregistered subscribers are a consideration in denying access in Obhan. Therefore, based on Obhan’s disclosure and the record before us, we agree with Patent Owner, and find persuasive Dr. Pachamov’s testimony, that Obhan’s system presumes that network attach has occurred. See PO Resp. 42–43; Ex. 2016 ¶¶ 93–95.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“In our Institution Decision, we preliminarily adopted Petitioner’s unopposed6 proposed level of ordinary skill in the art. Paper 9, 17–18. Patent Owner does not challenge Petitioner’s characterization of the level of ordinary skill in the art or offer an alternative. See generally PO Resp. Nothing in the full record persuades us that our preliminary finding as to the level of ordinary skill in the art was incorrect. Accordingly, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The only term for which parties propose construction is the term “register,” which is not recited in any of the challenged claims. We determine that it is not necessary to provide an express interpretation of any terms, including “register,” for purposes of this Decision. 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 12
Patent outcomesUS 9,253,637 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,253,637
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.