- Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00333 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not indicate possession by the inventor the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25. Patent Owner states: “A determination ‘based on’ policies and the identity of the device would have conveyed to a POSITA that the backup could have been based on a policy including the device being of the same brand as the second device.” Prelim. Resp. 46 (emphasis in original). The assertion is misplaced because it refers to what “could have been” a policy, rather than what policy the provisional application disclosure conveys the inventor actually possessed. What potentially “could have been” is mere speculation, not written description indicating possession.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). 9 The record does not include any evidence of secondary considerations of nonobviousness. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts: Kodama recognizes “if data restoration is to be performed to a different product or a different manufacturer, the format and product proprietary information of data between the products will differ.” APPL-1010, [0157]. POSITA would recognize this differing format can create compatibility issues and thus would recognize an advantage of, and reason for, basing the initiation of data transfer to the second device on brand and thereby avoiding these compatibility issues as taught by Kodama. APPL- 1003, ¶190. Pet. 60. But the same brand requirement of Kodama is not provided to solve any problem with differing formats. Kodama states: At Step 1313 of the restoration processing, if data restoration is to be performed to a different product of a different manufacturer, the format and product proprietary information of data between the products will differ. Thus, before the restoration processing function of the online backup service system 0128 sends the data read at Step 1318 to the HDD recorder 0116, the data format is converted into the file format of the HDD recorder 0116 of the restoration destination. Ex. 1010 ¶ 157. Kodama does not describe format compatibility as presenting any problem. Requiring brand identity between the first device and the other devices of the user in Jakobsson ’351 to synchronize data among all of the user’s devices is also not an advantage. The devices of the user in Jakobsson ’351 are devices the user already owns, possesses, and uses. They are not a new device as in the case of Kodama, where a broken device may be expected to lead to the user acquiring a new device of the same brand as replacement. Petitioner provides no explanation as to why one would expect all of the user’s devices in Jakobsson ’351 would be of the same brand. Applying a same-brand requirement would substantially undermine and may even render inoperative Jakobsson ’351’s feature of synchronizing user data among all of the user’s devices. We do not see this result as either an advantage or an improvement.” slip op. at 51
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00329 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 on all Petition grounds after finding a reasonable likelihood of prevailing on at least one 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
- Other 314aDenied
“determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 90
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,972,010 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00331 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–12, 14–18, and 20–23 based on a reasonable likelihood of success on at least one claim, applying all challenges in the Petition.
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
- Other 314aOther
“V. CONCLUSION Based on the arguments and evidence presented by the parties, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 95
- Obviousness (§103) › Analogous artAnalogous artInstituted
“4. WHETHER PETITIONER ESTABLISHES A REASONABLE LIKELIHOOD THAT STONE IS ANALOGOUS ART” slip op. at 38
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00334 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR of claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 on all petitioned grounds, finding a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’138 patent on all grounds set forth in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s contentions are misplaced. It is an oversimplification to say that if the expert testimony is the same as statements in the Petition, then the testimony should be accorded no weight. The issue is not whether the two are the same or nearly identical. Rather, the issue is whether the testimony refers to supporting evidence or contains technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). This is consistent with 37 C.F.R. § 42.65(a), which states: “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We do not accord expert testimony little or no weight simply because it is verbatim to what Petitioner states in the Petition. Patent Owner has not even attempted to show that Dr. McDaniel’s testimony is without citation to underlying evidence and lacks technical reasoning. Further, Dr. McDaniel’s testimony regarding motivation to combine the teachings of Kesanupalli and Brown includes numerous other paragraphs, e.g., paragraphs 75–79, and Dr. McDaniel also has testified to the technical content of Kesanupalli, e.g., paragraphs 65–70. All of that testimony should be read together in determining whether Dr. McDaniel’s testimony regarding combining the teachings of Kesanupalli and Brown is wholly conclusory, i.e., without any evidentiary support or technical reasoning. Patent Owner has not shown that it is. Thus, Patent Owner’s argument that Dr. McDaniel’s testimony should be accorded no weight as to the reasonable expectation of success analysis lacks merit. We decline to accord Dr. McDaniel’s testimony no weight. E.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. It is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (Prelim. Resp. 10–11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Each independent claim recites generally “a processor;” and the ’138 patent states “[a]s used herein, the term ‘processor’ refers to one or more devices, circuits, and/or processing cores configured to process data, such as computer program instructions.” APPL-1001, 2:21–23. POSITA would understand that the plain and ordinary meaning of the term “processor” may include “one or more devices, circuits, and/or processing cores,” which includes a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor. APPL-1003, ¶56. Pet. 7. Patent Owner has not proposed a construction for “processor” and states that “it does not address these positions [of Petitioner]” because its Response “does not depend on these definitions.” Prelim. Resp. 11. Based on the description in the specification of the ’138 patent, as cited by Petitioner, we determine, preliminarily, that a “processor,” in the context of the ’138 patent, may include a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,514,138 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6, 10–16, 20, and 21 because Apple showed a reasonable likelihood that at least one claim would have been obvious over Kesanupalli, Challener, and Cheng.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1029, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because neither the same nor substantially the same art or arguments were made to the Office during prosecution of the ’512 patent or in the 251 IPR, we determine that the first prong of the Advanced Bionics framework is not satisfied. Since the first prong of the Advanced Bionics framework is not satisfied, we need not reach the second prong of the Advanced Bionics framework. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’512 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’512 patent on the ground stated in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”)); see also RightQuestion, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. McDaniel’s testimony summarizing the relevant disclosures from Kesanupalli, Challener, and Cheng. Ex. 1003 ¶¶ 61–73. Patent Owner also ignores Dr. McDaniel’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Ex. 1003 ¶¶ 74–80. This testimony contains specific detailed citations to the references in support of Dr. McDaniel’s opinions. We, thus, find that Dr. McDaniel’s testimony, taken as a whole, in support of the Petition is supported sufficiently at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition.” slip op. at 44
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,929,512 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jul 12, 2024 · IPR2024-00381 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition challenges after finding a reasonable likelihood of prevailing on the asserted obviousness grounds.
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 1–20 in the ’012 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “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. 8. Petitioner also asserts that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. Dr. Clark’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 23. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’012 patent as well as the asserted references.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor 4 For Exhibit 1010 (Plaintiffs’ Opening Claim Construction Brief), we cite to the page numbers of the brief rather than the header page numbers. Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, 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 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Alleged Reason to Combine the Teachings of the References Petitioner identifies a reason that would have prompted an ordinarily skilled artisan to combine Murphy’s teachings with Evenhaim’s teachings in the way Petitioner proposes, i.e., to provide “additional details about how to beneficially implement statistical de-identification.” See Pet. 15–16. Further, Petitioner asserts that an ordinarily skilled artisan would have had a “reasonable expectation of success” in combining the teachings of the references. Id. at 16. Dr. Clark’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 68–70. For instance, Dr. Clark testifies that Murphy describes “measures [that] would prevent a search for a single subject in Evenhaim to result in the identification of the subject’s medical records” and, therefore, “reduc[e] the risk of a HIPAA violation.” Id. ¶ 68. According to Dr. Clark, Murphy does so by recommending: (1) “at least a minimum amount of de-identified medical data (i.e., multiple patient records) such that the query complies with the HIPAA statistical requirements”; and (2) “maintaining a log of queries to ensure that a user does not repeatedly submit a query that returns the same number of results multiple times within a defined time period.” Id. Based on the current record, Petitioner establishes sufficiently that an” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,886,012 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jul 12, 2024 · IPR2024-00382 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on all three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet.”), to institute an inter partes review (“IPR”) of claims 1–22 (the “challenged claims”) of U.S. Patent No. 9,665,685 B1 (“the ’685 patent”). 35 U.S.C. § 311 (2018). Vigilytics LLC (“Patent Owner”) did not file a Preliminary Response. We have jurisdiction under 35 U.S.C. § 6. 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.” 35 U.S.C. § 314. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VII. 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 networking and/or data records management.” Pet. 8 (citing Ex. 1003, Clark Decl. ¶¶ 20–25). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶¶ 20–25). 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 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. The ’685 patent issued from a continuation application filed on April 22, 2016 (Ex. 1001, code (22)) and claims priority under 35 U.S.C. § 120 to an application filed on June 30, 2010. Id. at code (63), 1:7–20. We apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 4 U.S. Pat. Appl. Publ. No. US2002/0111833 (Ex. 1007) 5 U.S. Pat. No. 7,519,591 (Ex. 1008) 6 Shawn N. Murphy & Henry C. Chueh, A Security Architecture for Query Tools Used to Access Large Biomedical Databases, 2002 AMIA Annual Symposium Proceedings, 552–56 (2002) (Ex. 1009). we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’685 patent and the references.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Petitioner’s Contentions Concerning Motivation to Combine the Teachings of Evenhaim and Settimi Petitioner notes that, where Evenhaim sends healthcare data queries to various healthcare organizations, Settimi consolidates the information from various providers in a central repository for queries. Pet. 39 (citing Ex. 1005, 15:15–24, 16:5–21, Fig. 4; Ex. 1006, Figs. 1–2, ¶ 27; Ex. 1003, Clark Decl. ¶ 132). According to Petitioner, Settimi’s repository eliminates the need for conducting searches across different entities and uses a “common vocabulary” that make searching easier and more reliable. Id. (citing Ex. 1006 ¶¶ 9, 60–62; Ex. 1003, Clark Decl. ¶ 131). Petitioner further cites Settimi as disclosing generating encoded patient identifiers (EPIDs) for individuals, i.e., encrypted tokens, based, e.g., on a patient’s name or Social Security number, and querying the repository to obtain records without revealing the patient’s identity. Id. at 38 (citing Ex. 1006 ¶¶ 37–43; Ex. 1003, Clark Decl. ¶¶ 51–52, 130–131). According to Petitioner, a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Settimi to simplify search vocabulary, while still allowing for searches for specific patients. Id. at 39 (citing Ex. 1006 ¶¶ 9, 14, 17, 27, 39–40; Ex. 1003, Clark Decl. ¶¶ 131–132). For purposes of this Decision, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to apply the teachings of Evenhaim to a central repository, as disclosed in Settimi.” slip op. at 24
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,685 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00311 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–22 on all three asserted § 103 grounds, finding a reasonable likelihood of success on each challenge.
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 networking and/or data records management.” Pet. 9 (citing Ex. 1003, Clark Decl. ¶ 22). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶ 22).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“without waiving its right to pursue alternative constructions in any future litigation.” Pet. 8. We understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under the Phillips standard applied by the district courts. 37 C.F.R. §§ 42.100(b), 42.104(b)(4). 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. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“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 (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
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,109,375 - 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
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.