- Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00307 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20 because Datavant showed a reasonable likelihood of prevailing on each asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. The ’651 patent issued from a continuation application filed on May 26, 2017 (Ex. 1001, code (22)), which is a continuation of applications filed on April 22, 2016 and November 18, 2013, and claims priority under 35 U.S.C. § 120 as a continuation-in-part to an application filed on June 30, 2010. Id. at code (63), 1:7–21. Therefore, we apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 Murphy and Church, “A Security Architecture for Query Tools Used to Access Large Biomedical Databases,” in Bio*medical Informatics: One Discipline, AMIA 2002 Symposium Proceedings 552–56 (Isaac S. Kohane, ed., 2002) (Ex. 1009) 4 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 5 US. Pat. Appl. Publ. No. US 2002/0111833 (Ex. 1007) 6 U.S. Pat. No. 7,519,591 (Ex. 1008) networking and/or data records management.” Pet. 8. Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. at 8–9 (citing Ex. 1003, Clark Decl. ¶¶ 22–25). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’651 patent and the references.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15–16 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“l) Conclusion As To Representative Clam 7 In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate a person of ordinary skill would have been motivated to combine the teachings of Evenhaim and Murphy and their combined teachings would have disclosed or suggested all the limitations of claim 7 to a person of ordinary skill in the art. Independent Claims 1 and 14 Independent claim 1 is drawn to a method and recites steps that correspond to the operations recited in claim 7. Independent claim 14 is drawn to a computer readable storage medium storing instructions executable by a processing device to perform operations that correspond to those in claim 7. For the same reasons as those addressed in our discussion of claim 7, we determine that Petitioner has demonstrated that Evenhaim and Murphy teach the limitations of independent claims 1 and 14.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,965,651 - PTAB · Jun 21, 2024 · IPR2024-00343 · APJ John R Kenny · IPR · Institution
The Board instituted IPR on claims 1–7 based on all asserted grounds, finding a reasonable likelihood of success on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a) (2018). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine that the Petition has met this standard. Further, we decline to discretionarily deny inter partes review. Therefore, we institute an inter partes review of claims 1–7 of the ’052 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board has set forth a two-part framework for this determination under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 45
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“B. Analysis The Interim Procedure instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In this proceeding, Patent Owner has not challenged Petitioner’s definition for an ordinarily skilled artisan. See generally Prelim. Resp. In the Qualcomm litigation, however, Patent Owner described a person of ordinary skill in the art as having: a Bachelor of Science (or equivalent) degree in electrical engineering, computer engineering, or a related field, and 2–3 years of work experience in very large-scale integrated (“VLSI”) systems, such as application-specific integrated circuits (“ASICs”), application-specific standard parts (“ASSPs”), system-on-chip (“SoC”), or field programmable gate arrays (“FPGAs”), and has an understanding of on-chip interconnection networks. Ex. 1017, 11. In this proceeding, Petitioner’s definition is uncontested and appears consistent with the level of skill reflected in the specification of the ’052 patent (“Specification”) and in the asserted prior-art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, for purposes of this Decision, we adopt Petitioner’s definition. We note, however, that we would reach the same conclusions in this Decision if we were to adopt the definition that Patent Owner set forth in the Qualcomm litigation. To the extent the parties dispute the definition of an ordinarily skilled artisan during” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,594,052 - PTAB · Jun 21, 2024 · IPR2024-00338 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–6 and 9–16 on all asserted challenges, finding a reasonable likelihood that Samsung would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. GENERAL PRINCIPLES “Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.” Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018). In an inter partes review, a petitioner has “the burden to prove” that a reference “is a printed publication.” Id.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“combined throughput and latency guarantee (GT), or be best effort (BE), with an unspecified finite latency upper bound,” an ordinarily skilled artisan would have understood that one channel is “independently configurable” for “a combined throughput and latency guarantee (GT)” and that another channel is “independently configurable” for “best effort (BE), with an unspecified finite latency upper bound.” Ex. 1003 ¶ 103; Ex. 1005, 3. Petitioner quotes that disclosure in Goossens2002 when explaining what an ordinarily skilled artisan would have understood. Pet. 28 (quoting Ex. 1005, 3). Accordingly, we disagree with Patent Owner that Petitioner provides “no explanation” why an ordinarily skilled artisan would have” slip op. at 44
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,373,449 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · May 13, 2024 · IPR2024-00226 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted obviousness grounds based on Evenhaim; Evenhaim with Settimi; Dick with Landi; and Dick, Landi, with Murphy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. See 35 U.S.C. § 314(a) (2018) (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”). We therefore institute inter partes review as to all of the challenged claims of the ’641 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (2023) (“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 petitioner adoptedDecided for petitioner
“patent would have possessed “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Clark Decl. ¶ 22). Petitioner adds that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“from Patent Owner’s claim-construction brief in the related district court litigation and “adopts these constructions for this proceeding.” Pet. 8 (citing Ex. 1010, 9–20). Patent Owner’s brief identifies these as “disputed claim terms.” Ex. 1010, i (Table of Contents). The brief indicates that Petitioner disputes Patent Owner’s construction for each of the terms. Id. at 1 (referring to the parties’ Joint Claim Construction Statement). As Petitioner expressly “adopts these constructions for this proceeding” (Pet. 8), we understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under 37 C.F.R. 42.104(b)(3) (2023). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp., 868 F.3d at 1017. Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 16
Claim constructioncites KSRPatents in suitUS 9,118,641 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - PTAB · Mar 14, 2024 · IPR2024-00023 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–3, 5, 7, and 9 on all petition challenges because Samsung showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–3, 5, 7, and 9 in the ’339 patent on all challenges included in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Petitioner identifies where claim 1 differs from Chatterjee, i.e., in certain aspects of limitations 1.g and 1.h. See supra §§ III.D.3(h)–(i). Petitioner also addresses how the combined disclosures in Chatterjee and Corbridge teach “the claimed invention as a whole” according to § 103. See supra §§ III.D.3(a)–(j); 35 U.S.C. § 103. Additionally, Petitioner provides a reason with rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine Corbridge’s teachings with Chatterjee’s teachings in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.D.3(k).” slip op. at 84
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,038,339 - PTAB · Mar 13, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–20 on all Petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–20 of the ’343 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Keysight IPR. See IPR2023- 00446, Paper 9.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8.” slip op. at 4
NonePatents in suitUS 10,567,343 - PTAB · Feb 22, 2024 · IPR2023-01329 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–27 on all petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR, with no new grounds added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW We instituted inter partes review in the Keysight IPR on all challenged claims and all asserted grounds of unpatentability. IPR2023- 00445, Paper 10. Petitioner’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Keysight IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“[the instant Petition] is substantively identical to Keysight’s IPR.”). As noted above, Patent Owner does not refute the same. Paper 5, 1. Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–27 of the ’266 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8. According to Petitioner, its “Petition presents the unpatentability of the same claims of the same patent on the same grounds as the Keysight Petition.” Id. at 5. Petitioner also argues that “Patent Owner will not be required to provide any additional analysis or arguments beyond what it will already provide in responding to the Keysight Petition,” and does not unduly burden or negatively impact the trial schedule. Id. at 6–7. Further, Petitioner agrees to take an “understudy” role and Petitioner “will assume the primary role only if Keysight ceases to participate in the Keysight IPR.” Id. at 7–8. Thus, according to Petitioner, Patent Owner would not suffer prejudice if the two proceedings are joined. Id. at 8. Patent Owner has not disputed the above contentions by Petitioner and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Petitioner has shown that joinder to the Keysight IPR is appropriate in this case. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 4
NonePatents in suitUS 10,785,266 - PTAB · Jan 19, 2024 · IPR2023-01047 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 27, 28, 31, and 33 over all four asserted obviousness grounds; the unrebutted Hartsell challenge to claim 27 was compelling and met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstituted
“under § 314. In particular, based on the most recent median time-to-trial statistics for the Eastern District of Texas, the district court’s projected trial date significantly precedes our projected deadline for a final written decision (factor 2). Also, the parties and district court are significantly invested in the district-court proceeding, as the record reflects that claim construction and fact discovery have been completed (factor 3). Petitioner’s proposed stipulation that it will “cease asserting in the co-pending litigation the combination of references on which trial is instituted for the claims on which trial is instituted, to the extent Petitioner even asserts the same combination in the district court” (Pet. 81) weighs against discretionary denial (factor 4), but this type of limited stipulation is not sufficient to outweigh factors 2 and 4 US 6,496,291 B1; issued Dec. 17, 2002. Ex. 1007. 3 on these facts. We next turn to the “compelling merits analysis” of Fintiv factor 6. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2022) (precedential).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’323 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the invention would have had “a master’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately four to six years of work experience in the field of communication networks.” Pet. 12. Petitioner also states that a lack of work experience can be remedied by additional education or vice versa. Pet. 12 (citing Ex. 1003 ¶ 22). Patent Owner does not address the level of ordinary skill in its Preliminary Response. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, which is consistent with the level reflected by the ’323 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner does not address claim interpretation. At this stage, we determine that it is unnecessary to construe any terms, although we preliminarily agree with Petitioner that the ’323 patent identifies FPGAs as a type of ASIC device. See Ex. 1001, 2:45–48; Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
Claim constructionDiscretionary denialcites PhillipsPatents in suitUS 7,921,323
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.