• Google LLC / ZTE (USA), Inc. et al. v. Cywee Group Ltd.All claims unpatentable
  PTAB · Feb 12, 2020 · IPR2018-01257 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 10 and 12 are unpatentable as obvious over Zhang and Bachmann and over Liberty and Bachmann; the motion to amend and both motions to terminate are denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “B. Analysis Under 35 U.S.C. § 315(b), we may not institute an inter partes review” slip op. at 15

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Denied

    “addition, Patent Owner filed a First Motion to Terminate this proceeding based on Petitioner’s alleged failure to identify all real parties in interest and/or privies. Paper 40 (“Mot. Term.”). Petitioner opposed Patent Owner’s Motion to Terminate (Paper 51, “Opp. Term.”), Patent Owner replied (Paper 65, “Reply Term.”), and Petitioner sur-replied (Paper 72, “Sur-reply Term.”).2 Subsequent to the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), we authorized Patent Owner’s request to file a Second Motion to Terminate to preserve Patent Owner’s positions related to the Constitutional concerns raised by that decision. Paper 823 (Second Mot. Term.). To this, Petitioner filed an opposition. Paper 86. An oral hearing was held with the parties, and a copy of the transcript was entered into the record. Paper 73 (“Tr.”).” slip op. at 3

  • Skill levelOther

    “B. Level of Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 42

  Patent outcomesUS 8,552,978 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,552,978
• Maxlinear, Inc. v. Cresta Technology Corp. And CF Crespe LLCSome claims unpatentable
  PTAB · Apr 17, 2019 · IPR2015-00592 · APJ Patrick M Boucher · IPR · Remand

  Claims 1–3, 5, and 10–20 are unpatentable by collateral estoppel; claims 4, 6–9, and 21 were not shown unpatentable because the combination rationale was insufficient.

  RulingsRemand decision

  • RemandOther

    “After this proceeding was remanded by the Federal Circuit, we invited the parties to address a proposed procedure that would include additional briefing regarding the impact of the prior holdings that claims 1–3, 5, and 10–20 are unpatentable, and the parties filed their respective proposals. Papers 78–80. In its proposal, Petitioner suggested that Patent Owner “has waived the right to address the patentability of claims 4, 8, and 9” because “Patent Owner never separately argued for the patentability of these claims.” Paper 79, 1; see MaxLinear, 880 F.3d at 1378 n.4 (“On remand, the Board may consider whether CRESPE has waived arguments concerning these claims.”). But those claims were not challenged in the earlier proceedings that held claims 1–3, 5, and 10–20 unpatentable. Rather, those claims were only challenged in this proceeding with respect to art that was not at issue in the earlier proceedings. In advancing its contention, Petitioner effectively makes the untenable argument that Patent Owner must provide separate reasons for the patentability of claims 4, 8, and 9, even when we determine that its own case-in-chief for those claims is insufficient. In addition, Petitioner’s proposal requests briefing on the issues of “whether claims 6, 7 and 20 materially alter the [unpatentability] analysis on which the prior [unpatentability] determinations rested.” Id. We have considered, and deny, that request. The Federal Circuit’s remand order noted that the fact that “MaxLinear was not a party to the other IPRs is . . . irrelevant since Cresta, the predecessor in interest to CRESPE, was party to the original determination.” MaxLinear, 880 F.3d at 1377. But the Federal Circuit’s order does not state or suggest that the fact that different prior art was considered in the earlier proceedings is similarly irrelevant. Indeed, we agree with Patent Owner that “[t]he Federal Circuit has not ordered the Board and the parties to start over from scratch, and certainly not with new prior art.” Paper 80, 3; see Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (“The Board may control its own proceedings, consistent with its governing statutes, regulations, and practice.”). Patent Owner is correct that “[a]llowing new prior art to be considered on remand after the Final Decision on the merits would essentially be starting a new IPR proceeding.” Paper 80, 9. As Patent Owner asserts, “[t]he parties and the Board would have to argue and consider new grounds, new expert testimony would have to be taken and presented, and a new Final Decision would have to be rendered.” Id. The Federal Circuit’s instruction is limited: “We remand this case to the Board so that it may consider the patentability of the surviving disputed dependent claims 4, 6-9, and 21.” MaxLinear, 880 F.3d at 1378. We have complied with this instruction in two ways: first, by applying the Federal Circuit’s instruction regarding the collateral-estoppel impact on challenged claims 1–3, 5, and 10–20; and, second, by clarifying that Petitioner’s argument regarding the combination of Van De Plassche and Ishikawa compels a conclusion that Petitioner’s showing is insufficient with respect to claims 4, 6–9, and 21, independent of any conclusion previously reached with respect to independent claims 1 and 17. While the Federal Circuit includes language in its remand order that might be construed as suggesting applying different prior art in the latter analysis, 880 F.3d at 1377, the scope of this proceeding is limited by the prior art and the arguments in the Petition here. SAS Institute, 138 S. Ct. at 1356 (“in an inter partes review the petitioner is master of its complaint”); see Paper 80, 8 (Patent Owner addressing potential ambiguity of Federal Circuit’s instruction).” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Experience is but one of several factors that may be considered when determining the level of ordinary skill in the art. See, e.g., In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (identifying factors as including the “type of problems encountered in the art,” “prior art solutions to those problems,” “rapidity with which innovations are made,” “sophistication of the technology,” and “educational level of active workers in the field”). “In a given case, every factor may not be present, and one or more factors may predominate.” Id. Patent Owner’s distinction relates to a portion of one factor (education) in a determination that involves several factors. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry”). Patent Owner does not explain persuasively how the alleged omission by Petitioner impacts the obviousness analysis. We conclude that Petitioner’s proposed definition, which is consistent with the level of skill generally reflected by the prior art of record, reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Importantly, we find that Patent Owner did not exhaust avenues available to it in attempting to secure answers to its questions from Dr. Hashemi. The line of questioning involving Exhibit 2008 occurred late in the day, “well after the close of business on the east coast,” and an attempt by the parties to telephone the Board during the deposition was unsuccessful. See Opp. 3; Ex. 2006, 154:24–155:4. The parties discussed contacting the Board the following day, and continuing the deposition the day after that, when Petitioner would make Dr. Hashemi available for further cross-examination after receiving guidance from the Board. Ex. 2006, 155:5–157:13. Rather than proceed in this fashion, Patent Owner decided to abandon the line of questioning and passed the witness for redirect: “I think after we talked about it a bit, I think we will withdraw our questions on this document and just move on to redirect.” Id. at 157: 22–25 (emphasis added). Dr. Hashemi could have answered the questions and sought a protective order that would insulate his answers from the public record, providing the Board with the information needed to perform a focused evaluation of the credibility and reliability of specific statements in his testimony. But a significant measure of responsibility for whether Dr. Hashemi’s testimony is tainted with bias lies with Patent Owner for declining to pursue the issue to a point of greater clarification. Indeed, we are limited in how strongly we can fault Petitioner for failing to submit a clarifying declaration from Dr. Hashemi, in light of Patent Owner’s decision to “withdraw” the questions at issue. Because the evidence is insufficiently developed, we are similarly limited in the degree to which we can draw adverse inferences from Dr. Hashemi’s refusal to answer questions, and unable to conclude, by a preponderance of the evidence, that Dr. Hashemi’s testimony is tainted by an undisclosed bias. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached

    “C. Petitioner’s Motion to File Supplemental Information Pursuant to our authorization, Petitioner filed a Motion for Leave to File Exhibits 1213–17 as Supplemental Information, which Patent Owner opposes. Papers 83, 86. The Motion asserts that such information is “relevant to the issues in the case, specifically the lack of nexus between any purported secondary consideration, including surprising or unexpected results.” Paper 83, 1. We do not reach Patent Owner’s arguments regarding secondary considerations because we conclude that Petitioner’s case-in-chief is insufficient. Accordingly, we dismiss the Motion as moot.” slip op. at 17

  Patent outcomesUS 7,075,585 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,075,585
• BMW Of North America, LLC v. Stragent, LLCAll claims unpatentable
  PTAB · Jun 13, 2018 · IPR2017-00677 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 51–59 are unpatentable: claims 51–59 over Staiger and Millsap, and claims 51 and 54–57 over each OSEK-based obviousness ground.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to exclude, deniedDenied

    “We have reviewed the relevant deposition testimony, in which Dr. Miller was asked to identify the standard he used when construing claim terms in his Declaration. Ex. 1025, 27:1–34:14. We agree with Petitioner that Dr. Miller did not provide responses sufficient to conclude that he was aware of and/or applied the correct claim-construction standard. See id. at 27:5–6 (“I used what is generally accepted in the field.”), 27:9–11 (“So to – for construing the claim terms is providing a definition of what the term is. So I provided a general definition for the terms.”), 30:3–6 (“Well, that’s the standard that I used for construing the claim terms in this Declaration. I don’t know if that’s the legal qualification for construing claim terms.”), 32:18–23 (“broadest reasonable interpretation” would mean “when you’re defining a term that you would define it in a way that is, first of all, reasonable, that it makes sense and that it’s broad, meaning general and that it’s interpreting the phrase or the term”). Nevertheless, we are not persuaded that the appropriate remedy is exclusion of Dr. Miller’s testimony. As Patent Owner asserts, “[t]he role of the expert witness under the Federal Rules of Evidence is to ‘help the trier of fact to understand the evidence or to determine a fact in issue.’” Paper 24, 2–3 (quoting Fed. R. Evid. 702) (emphasis by Patent Owner). As Patent Owner further asserts, Petitioner does not “impugn[]” Dr. Miller’s credibility as an expert in the subject matter at issue. Id. at 3–4. We agree with Patent Owner that “Petitioner’s attack on the sufficiency of the evidence is improper in a motion to exclude.” Id. at 4 (citing Microsoft Corp. v. Surfcast, Inc., Case IPR2013-00292 at 52–53 (Paper 93) (PTAB Oct. 14, 2014)). We accordingly deny Petitioner’s Motion to Exclude.” slip op. at 13

  • Expert testimonyPatent owner expert discountedOther

    “Petitioner alternatively argues in its Reply that “Because Dr. Miller did not apply the correct claim construction standard, his opinions on claim construction (Ex. 2001, §§16-21) should be afforded no weight.” Reply 2. Although we agree that the weight to be accorded to Dr. Miller’s testimony on claim construction is impacted by the uncertainty of the analytical procedure he followed, we are not persuaded that his testimony should be discounted wholesale. Dr. Miller provides relevant opinions on a number of issues, particularly including how a person of ordinary skill in the art would understand certain terms in light of the Specification, that are helpful to us as the trier of fact. “There is no more certain test for determining when experts may be used than the common sense inquiry whether the untrained layman would be qualified to determine intelligently and to the best possible degree the particular issue without enlightenment from those having a specialized understanding of the subject involved in the dispute.” Ladd, Expert Testimony, 5 Vand. L. Rev. 414, 418 (1952).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “shared “in real time utilizing a second network protocol . . . ,” and dependent claim 59 recites that information is processed “to create, in real-time, messages in at least two other message formats . . . .” Petitioner argues that the Specification of the ’843 patent expressly defines “real-time”: “In the context of the present description, real-time may include any response time that may be measured in milli- or microseconds, and/or is less than 1 second.” Ex. 1001, col. 3, ll. 35–38. Accordingly, Petitioner proposes that “‘real-time’ should be construed as responses that occur in less than one second.” Pet. 13. Patent Owner contends that the definition from the Specification should be adopted. PO Resp. 15. We construe “real-time” as Petitioner proposes, i.e., as including responses that occur in less than one second. The first part of the quote cited above provided in the Specification (“may be measured in milli- or microseconds”) is not limiting because any response time, no matter how large or small, may be measured in milli- or microseconds.” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “been reached in association with the storage request.” Petitioner proposes that “threshold” be construed consistent with a dictionary definition it provides, as a “value above which something is true or will take place and below which it is not or will not.” Pet. 13–14 (citing Ex. 1016, 5). Observing that the Specification of the ’843 patent uses “threshold” in the context of an elapsed time, Petitioner further proposes that this construction “include the maximum value (i.e., time-out) of a timer.” Id. (citing Ex. 1001, col. 8, ll. 21–25, col. 8, ll. 47–51). We agree, and accordingly construe “threshold” as Petitioner proposes.3 3. “heterogeneous networks” Dependent claim 55 recites that the “apparatus is operable such that the first network and the second network are heterogeneous networks.” The Specification of the ’843 patent defines “heterogeneous networks”: “In the context of the present description, heterogeneous networks may refer to any different communication networks with at least one aspect that is different.” Ex. 1001, col. 7, ll. 26–29. In light of this explicit definition, for purposes of this Decision, we construe “heterogeneous networks” as Petitioner proposes, i.e., as “networks having at least one aspect that is different.” Pet. 14 (citing 3 Patent Owner advocates for the same construction advanced by Petitioner, but omits inclusion of the maximum value of a timer. PO Resp. 15. Although Patent Owner asserts that the construction is otherwise “the definition provided by the ‘843 Patent,” it does not cite to the ’843 patent to support its assertion, and we are unable to identify such a definition in the patent. Nevertheless, we agree with Petitioner that any distinction between the constructions is not material to any grounds. See Reply 6.” slip op. at 16

  Patent outcomesUS 8,566,843 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,566,843
• LG Electronics, Inc. v. Broadcom CorporationInstitution denied
  PTAB · Dec 19, 2017 · IPR2017-01624 · APJ Norman H Beamer · IPR · Institution

  The Board denied institution because Diaz did not disclose internally reprogrammable hardware accelerators, and the other grounds did not cure that deficiency.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “3. Construction of “configurable” In construing this term, we have considered the specification of the ’353 patent and its prosecution history. Microsoft Corp. v. Proxycinn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In accord with these portions of the ’844 patent specification and file history discussed supra, we conclude that a hardware accelerator is configurable only if its functionality can be internally reprogrammed. Thus, under our construction, an accelerator selected by an API or other instrumentality would not itself be “configurable.” This will be discussed further infra.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “However, as Patent Owner argues, Diaz ’353 does not explicitly or inherently disclose hardware accelerators that are configurable to perform decoding functions according to a plurality of decoding methods. In Diaz ’533 the overall decoder — as opposed to the constituent hardware accelerators — is configurable in that the processor controls which hardware accelerators are activated. Prelim. Resp. 2, 5–8. We see no meaningful distinction in this respect between Diaz ’353 and Sullivan ’021 which, as discussed above, discloses an API that is configurable to select various hardware accelerators, but which are not themselves configurable, to assist in the decoding process. See Prelim. Resp. 6. In sum, the functionality of the hardware accelerators of Diaz ’353 cannot be internally reprogrammed, but rather can only be bypassed or reused for various operations. Therefore, in accord with our claim construction set forth above, we determine that those hardware accelerators are not “configurable” as required by claim 1. Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “C. Obviousness of Claims 8 and 14 over Diaz ’353 and Purcell ’483, and of Claim 12 over Diaz ’353 and Fandrianto ’459 or Kim As discussed above, Petitioner has not demonstrated a reasonable likelihood of prevailing on the issue of whether Diaz ’353 discloses the claim 1 requirement of configurable hardware accelerators. Claims 8, 12, and 14 depend from claim 1 and so also include this requirement by virtue of their dependency. Petitioner’s obviousness grounds directed to these claims is premised on Petitioner’s arguments with respect to claim 1 that Diaz ’353 discloses configurable hardware accelerators. Pet. 51–63. Petitioner does not provide argument or evidence — aside from the above-considered anticipation arguments based on Diaz ’353 alone — that the combination of Diaz ’353 with Purcell ’483, Fandrianto ’459 or Kim teaches or suggests “a hardware accelerator . . . configurable to perform the decoding function according to a plurality of decoding methods.” Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of claims 8 and 14 as obvious over Diaz ’353 and Purcell ’483, or of claim 12 as obvious over Diaz ’353 and Fandrianto ’459 or Kim.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Accordingly, Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as anticipated by Diaz ’353.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,284,844
• NXP USA, Inc. v. NFC Technology, LLCAll claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00681 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 6–8, 10, 11, 28–31, 34, and 35 are unpatentable under § 103 over Gunnarsson and the RFID Handbook, with Bashan added for claims 10, 28–31, 34, and 35.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “previously presented by NFCT in its Preliminary Response filed in this case (Paper 10, 7–9), we explained that we agreed with NFCT and the District Court that, in view of the inventors’ statements during prosecution, the inventors disclaimed devices having antenna circuits that do not include a coil, but that that point did not appear to be in dispute on the record before us, and we determined that there was no need to construe further the term “antenna circuit” at that stage of the proceeding. Dec. on Inst. 13 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”)). We further explained that, because challenged independent claims 1 and 28 already explicitly recite “an antenna circuit to generate a magnetic field” and “an antenna circuit that generates a magnetic field,” respectively (Ex. 1001, 12:29, 15:22), NFCT’s proposed inclusion of 12 “for radiating . . . a magnetic field” would not add meaningfully to the broadest reasonable interpretation of the term “antenna circuit.” Dec. on Inst. 13. Finally, we explained that although the specification of the ’770 patent describes an embodiment in which a magnetic field sent by a CIC reader appears by induction in the antenna circuit of another CIC reader (see, e.g., Ex. 1001, 9:10–13), we were not persuaded on the record then before us that the broadest reasonable interpretation of the term “antenna circuit” requires the language “for . . . receiving a magnetic field.” Dec. on Inst. 13– 14. In light of the fully developed record before us, including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 30–33) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 7–21) cited by NXP, we continue to agree with NFCT that the broadest reasonable construction of “antenna circuit” requires a coil. Nonetheless, for the reasons discussed above, we remain unpersuaded that it would be necessary or proper additionally to include “for radiating and/or receiving a magnetic field” in the construction of “antenna circuit.” Thus, we determine that the broadest reasonable construction of “an antenna circuit,” as recited in the challenged claims, is “a circuit, including a coil.”” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “In light of the fully developed record now before us, particularly including Dr. Apsel’s testimony (Ex. 2004 ¶¶ 34–47) cited by NFCT and Dr. Mihran’s reply testimony (Ex. 1016 ¶¶ 22–35) cited by NXP, as well as further consideration of the claim differentiation arguments presented in connection with claims 29 and 30, we are persuaded that “load modulation signal” is a term of art in the context of RFID systems, specifically referring to a signal that transmits data by disturbing the magnetic field of another device in an inductive coupling system, and that NFCT’s proposed construction, accordingly, is the broadest reasonable construction of that term. We also agree with NFCT that this construction does not conflict with the presumption that a limitation added by a dependent claim is not found in its base claim. See Liebel-Flarsheim, 358 F.3d at 910. Claim 29 depends from claim 28 and adds the limitation “wherein the reader is configured to apply a load modulation signal with two states to the antenna circuit when the reader operates in the second operating mode and when data is to be transmitted to the other reader.” Ex. 1001, 15:36–40. The consequence of applying NFCT’s construction to that claim, thus, is that the reader must be configured to apply a signal that transmits data by disturbing the magnetic field of another, unspecified device. Claim 30, however, additionally requires the reader to be configured to apply to the antenna circuit not merely such a “signal that transmits data by disturbing the magnetic field of 20 another,” but more specifically a signal “comprising pulses of an alternating signal, the duration of each pulse being longer than the period of the alternating signal” and that is “configured to disturb the magnetic field generated by the second reader and being configured to be detected by the second reader as if [it] were a load modulation signal applied to an antenna load modulation switch of a contactless integrated circuit.” Id. at 15:41–50. Because NFCT’s proposed construction does not simply read narrowing limitations from claim 30 into claim 29, we disagree with NXP’s contention that the claims of the ’770 patent do not support NFCT’s construction. Pet. Reply 3. Thus, we determine that the broadest reasonable construction of “load modulation signal,” as recited in challenged claims 1–3, 6, 8, and 29–31, is a “signal that transmits data by disturbing the magnetic field of another device.”” slip op. at 20

  • PTAB / AIA Trials › Real party in interest / privityOther

    “Semiconductors Netherlands B.V. as real parties in interest with itself for this proceeding. Paper 20, 1. NFCT identifies France Brevets, S.A.S., as a real party in interest with itself for this proceeding. Paper 8, 2; see supra note 2. evidence to support these assertions, namely documents that purport to be license agreements between NFCT and Inside Secure. See Ex. 2001; Ex. 2002. In light of NFCT’s representations, we have treated NFCT as Patent Owner throughout this proceeding and continue to do so for purposes of this Decision, as reflected by the caption.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art would have a minimum of a bachelor’s degree in electrical engineering, or an equivalent field, and approximately three to five years of industrial or academic experience in working with wireless communication technology, including RFID devices and systems. Pet. 14 (citing Ex. 1003 ¶¶ 28–30). NFCT does not dispute this assessment of the level of skill and states that it and Dr. Apsel have used this definition in their analyses. PO Resp. 5 (citing Ex. 2004 ¶ 26). We see no compelling reason to apply a different level of skill than that accepted by both parties and accordingly adopt the level of skill advocated by Petitioner.” slip op. at 23

  Patent outcomesUS 7,098,770 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,098,770
• NXP USA, Inc. v. Inside Secure And NFC Technology, LLCNo claims unpatentable
  PTAB · Aug 30, 2017 · IPR2016-00692 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3, 7, 11, 12, 14, 18, and 22 not shown unpatentable over either § 103 combination because Petitioner failed to establish key routing-table and header-field limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that a person of ordinary skill in the art at the time of the claimed invention would have “a minimum of a bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field, and approximately two years of professional experience with data communications and routing, including in the context of wireless communications as applied to RFID systems, or other relevant industry experience.” Pet. 13 (citing Ex. 1003 ¶ 30). Patent Owner does not dispute” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Although the Federal Circuit has endorsed application of the broadest reasonable interpretation in construing claims during postgrant proceedings before the Board, it has cautioned that such endorsement “is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). “Rather, ‘claims should always be read in light of the specification and teachings in the underlying patent.’” Id. (quoting Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)). In addition, “[t]he PTO should also consult the patent’s prosecution history in proceedings in which the patent has been brought back to the agency for a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978 (Fed. Cir. 2014)). The Federal Circuit has emphasized that, even under the broadest reasonable interpretation, “the Board’s construction ‘cannot be divorced from the specification and record evidence,’” id. (quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)), and “‘must be consistent with the one that those skilled in the art would reach,’” Id. (quoting In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). With these principles in mind, we determine that Patent Owner’s proposed construction conforms with the broadest reasonable interpretation of “header field,” which excludes the “routing parameters” that are saved in the “routing table.” At the oral hearing, Patent Owner conceded that “if you look at the term header field in a vacuum without any context, it could mean” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “unpatentability, we determine that there are multiple deficiencies with Petitioner’s showing with respect to the proposed combination as related to specifically recited claim limitations. See 35 U.S.C. § 316(e); 35 U.S.C. § 312(a) (requiring the petition to identify “in writing and with particularity . . . the grounds on which the challenge to each claim is based”); see also 37 C.F.R. § 42.104(b) (requiring “a statement of the precise relief request”). Because we find that even the combination, if effected in the manner proposed by Petitioner, does not meet all limitations recited in the challenged claims, we do not reach the issue of whether Petitioner articulates sufficient reasoning with rational underpinning to effect the combination. See Pet. 21–28; PO Resp. 21–47. First, we agree with Patent Owner that Petitioner insufficiently shows that the combination it proposes teaches or suggests “using the routing channel number as an index to select the destination point to which the 7 Although we rely on illustrations of Petitioner’s proposed combination as set forth in the Reply because they are more clear, we find those illustrations consistent with the position taken by Petitioner in the Petition. See Pet. 24– 27. controller subsequently sends the data.” PO Resp. 59–61. This limitation is recited in both independent claims 1 and 12 in the context of searching for a destination point of the data in the routing table. Ex. 1001, col. 19, ll. 6–9, col. 20, ll. 40–43. In articulating how it draws a correspondence between elements recited in the claims and entries of its proposed routing table, Petitioner makes the following identifications: (1) the recited “routing channel number” corresponds to the channel identifier in the inbound VCI allocated to a first data path defined by the card access module and router; (2) the recited “source point” corresponds to “an identifier of the SAP associated with a smart card application on the contact smart card . . . in the inbound ‘VPI’; and (3) the recited “destination point” corresponds to “an identifier of an SAP associated with software . . . in the outbound VPI.” Pet. 36. With these correspondences, we agree with Patent Owner that the channel identifier in the inbound VCI cannot function as an “index to select the destination point” as the claims require because there is no unique association of the outbound VPI with the inbound VCI.8 PO Resp. 59. This is evident from the table provided in the Reply, and reproduced above, in 8 Although we agree with Petitioner, as explained above in Section II.C.3, that a construction of “routing table” does not require a “one-to-one correspondence between the routing channel number and each corresponding routing parameter,” see PO Resp. 57 (emphasis added), the nature of an “index” nevertheless requires a unique association of the index with what it indexes. That is, an “index to select the destination point” must uniquely identify the selected destination point, even if the same destination point can be selected by multiple indexes. A “one-to-one” correspondence would additionally require that each destination point be selected only by a single index. which the same VCIin value of “Chin 1” is associated with different values of VPIout, namely “CPU SAP 1” in the first row and “RF SAP 1” in the third row.” slip op. at 29

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner also contends that “even under [Patent Owner’s] improper interpretation, it would have been an obvious implementation choice to use unique channel numbers as discussed in §V.B [of the Reply], such that the destination point is selected only with the channel number.” Reply 27–28 (citing Ex. 1024 ¶ 123). We do not consider this argument because it goes beyond the scope of argument made in the Petition. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’ [as required by 35 U.S.C. § 312(a)(3)].”).” slip op. at 31

  Patent outcomesUS 7,905,419 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,905,419
• Blue Coat Systems, Inc. v. Finjan, Inc.Rehearing granted
  PTAB · Jul 18, 2017 · IPR2016-01444 · APJ Patrick M Boucher · IPR · Rehearing

  Granted Blue Coat’s rehearing request and instituted review of claims 1, 4–6, 9, 12–14, 17, 24, 35, and 37; the petition showed a reasonable likelihood of prevailing on the asserted § 103 grounds.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “reexamination proceeding. Of particular relevance, the reexamination concluded with a Reexamination Certificate issued on November 28, 2016, including a claim for the benefit of the November 8, 1996 filing date of U.S. Provisional Appl. No. 60/030,639 (“the ’639 provisional application”). Ex. 3006 at [60]. In denying the Petition, the Prior Decision noted that “Petitioner has taken no steps to explain or respond to the effect of these developments on its argument.” Dec. 7. This remains true. Nevertheless, we agree with Petitioner that our Prior Decision gave insufficient consideration to the Petition’s assertion that “U.S. Patent No. 7,613,926 [(“the ’926 patent”), i.e., an intermediate patent in the priority chain of the ’086 patent] fails to claim priority to the ’639 provisional application and instead the earliest priority document cited in the ’926 patent is [the ’194 patent].” Pet. 5 (citing Ex. 1012, col. 1, ll. 8–32); see Req. Reh’g 4–5, 6 n.4, 7–9. For a claim of a patent to be entitled to the effective filing date of an earlier filed application, each application in the priority chain must refer to the earlier filed application. Encyclopaedia Britannica, Inc. v. Alpine Elecs. of Am., Inc., 609 F.3d 1345, 1350–52 (Fed. Cir. 2010). Accordingly, we grant Petitioner’s Rehearing Request and proceed to the merits of the Petition.” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedMixed

    “a formally defined safety policy” and allows checking “with certainty, that the proof is valid and hence the foreign code is safe to execute.” Ex. 1004, 107. Thus, Petitioner argues that one of ordinary skill in the art would reasonably understand Necula to teach that its proof-carrying code adds to the foreign code, consistent with the construction of “append” that we apply herein, and Petitioner articulates sufficient reasoning with rational underpinning to apply that teaching to Swimmer’s representation of DSP data. See Pet. 46–49. This is not an instance, for example, in which Petitioner relies on a characterization of the problem provided by the patent to derive its reasoning. Cf., e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372 (Fed. Cir. 2012). Indeed, Patent Owner’s contention that “the storage of the DSP in a database is one of the key features that distinguishes the ‘086 Patent over the prior art” dilutes the strength of its argument. The contrary positions of the parties’ declarants in their testimonial evidence creates a genuine issue of material fact, which we resolve in the light most favorable to Petitioner for purposes of this Decision. 37 C.F.R. § 42.108(c). Accordingly, we conclude that Petitioner has made a sufficient showing also with respect to these elements, and that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of claims 1 and 9. See infra Section II.E.10 (discussing limits in our weighing of Patent Owner’s Secondary Considerations evidence in this Preliminary Proceeding).” slip op. at 21

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “be considered under 35 U.S.C. § 312 because Petitioner has failed to name all real parties in interest, as required by the statute.” Prelim. Resp. 9. The parties agree that, on June 12, 2016, Symantec Corporation (“Symantec”) announced that it was acquiring Petitioner. Pet. 13; Prelim. Resp. 9. The Petition discloses that “[t]he transaction is expected to close in the third quarter of 2016,” and that “[a]s of the filing date of this petition the transaction has not been executed.” Pet. 13. The Petition further represents that “Symantec has not controlled or had the ability to control the filing of this petition, whether through funding or strategy.” Id. As noted above, Petitioner expressly identified Symantec as a real party in interest before any decision on institution of an inter partes review was made. Paper 8, 2. Patent Owner contends that “Symantec had control over the filing of the Petition during the period between the announcement of the acquisition and the closing of the acquisition,” which it asserts occurred on August 1, 2016. Prelim. Resp. 9. Patent Owner also contends that it “understands from the underlying litigation that ‘Blue Coat Systems, Inc.’ no longer exists 1 A petition to accept an unintentionally delayed claim of priority for the ’926 patent, claiming the benefit of U.S. Patent Appl. No. 08/790,097 which was filed January 29, 1997, was dismissed by the Office on June 13, 2017. Exs. 1027, 3007. A renewed petition was filed on June 16, 2017. Ex. 3008. At this time, the Office has not ruled on the renewed petition, and that pending petition accordingly does not affect our determination of the challenged claims’ effective filing date for purposes of this Decision. as an entity, or at least goes by ‘Blue Coat Systems LLC’ for at least the last two months.” Id. at 10. We have reviewed the evidence provided by Patent Owner and find it insufficient to support Patent Owner’s allegation that Petitioner has failed to comply with 35 U.S.C. § 312(a) or 37 C.F.R. § 42.8(a)(3). That evidence is, at best, suggestive regarding an issue that is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739, slip op. (PTAB Mar. 4, 2016) (Paper 38) (precedential).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “1. “Downloadable” Every challenged independent claim recites a “Downloadable,” and Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘downloadable’ includes ‘an executable application program, which is downloaded from a source computer and run on a destination computer.’” Pet. 15. Petitioner’s proposed construction parallels a statement made in the Specification of the ’194 patent. Ex. 1012, col. 1, ll. 44–47. Patent Owner “does not dispute” this proposed construction, which we adopt for purposes of this Decision. Prelim. Resp. 5. 2. “database” Challenged independent claim 42 recites “a database of Downloadable security profiles.” Petitioner contends that “[t]he broadest reasonable interpretation of the term ‘database’ includes ‘a collection of interrelated data organized according to a database schema to serve one or more applications.’” Pet. 15. Patent Owner also “does not dispute” this proposed construction, but argues that “the practical import of Petitioner’s proposed construction for the term ‘database,’ is that log files, such as Swimmer’s audit trail, do not fall within the scope of the claims.” Prelim. Resp. 5–6. That is, Patent Owner contends that “logging functionality is distinct from storing in a database, which allows DSP to be efficiently retrieved from the database,” as compared with the “record-keeping” functionality of an “event log.” Id. at 7. Patent Owner’s argument was considered by the panel in IPR2015- 01892, which concluded that, “[t]o the extent that construction would exclude a log file consisting of an ‘unstructured collection of data on a computer,’ . . . [an] unstructured log file would not be a database,” but the construction does not “necessarily exclude[] all log files from being databases.” 1892 Dec. 16 (emphasis in original). We agree with the reasoning expressed in the Final Written Decision of IPR2015-01892. Id. at 12–17. For purposes of this Decision, we adopt Petitioner’s proposed construction.” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,079,086
• Elekta, Inc. v. Varian Medical Systems, Inc.No claims unpatentable
  PTAB · Jun 5, 2017 · IPR2016-00380 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, and 4–9 were not shown unpatentable under either § 103 ground; claims 13 and 18 were canceled after Patent Owner’s motion to amend was granted.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Although a claim term that does not include the word “means” is presumed not to invoke a means-plus-function analysis, that presumption may be overcome if the limitation does not “recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function.” Williamson v. Citrix Online, LLC, 792 F.3d 2 Section 4(c) of the Leahy-Smith America Invents Act (“AIA”) redesignated 35 U.S.C. § 112, ¶ 6, as 35 U.S.C. § 112(f). Pub. L. No. 112- 29, 125 Stat. 284, 296 (2011). Because the ’703 patent has a filing date before September 16, 2012 (effective date of § 4(c)), we refer to the pre-AIA version of § 112. 1339, 1349 (Fed. Cir. 2015). Petitioner’s expert, Russell J. Hamilton, Ph.D., testifies that “the term ‘logic’ would not be recognized by one of ordinary skill in the art as providing sufficiently definite structure for performing the claimed functions,” and that “[l]ogic can be implemented in software, in hardware, and in combinations of hardware and software.” Ex. 1021 ¶ 122. The parties provide sufficient reasoning to overcome the presumption against a means-plus-function construction, and we accordingly construe “first logic” and “second logic” in accordance with 35 U.S.C. § 112 ¶ 6.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “untenable because its broad identification only of “computer software and/or computer hardware” as structure for performing the recited function is too generic. The law regarding construction of means-plus-function limitations as applied to computer-implemented elements is well-established: For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” . . . This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, . . . , or as a flow chart, or in any other manner that provides sufficient structure. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (citations omitted). Patent Owner’s proposed construction is superior because it identifies the algorithm through explicit reference to the flow chart of Figure 4 and related disclosure in the Specification. Patent Owner’s position is supported by testimony of its expert, Sasa Mutic, Ph.D., who refers to those disclosures in opining that “the [’703] patent describes a process of steps for obtaining the result of properly positioning a patient to begin a treatment” and that “Fig. 4 of the [’703] patent provides a flowchart of a process for use of an embodiment of the invention.” Ex. 2012 ¶ 69. Petitioner takes the position that the ultimate scope of the corresponding algorithm “does not matter” because Petitioner contends that the challenged claims are unpatentable even under Patent Owner’s proposed construction. Pet. Reply 315, 3. Nevertheless, Petitioner attacks Patent Owner’s proposed construction as “implicitly adopt[ing]” two “additional but unreasonable limitations.” Id. First, Petitioner contends that “the claims do not require the performance of the function of the second logic to be fully automated and instead permit human interaction with the second logic.” Id. Second, Petitioner contends that blocks 520 (“Position Patient”), 525 (“Register Treatment Image Data with Simulator/Reference Image Data and Reposition Patient”), and 530 (“Position Clinical Treatment Machine”) of Figure 4 “need not be performed in their entirety by logic so long as the second logic is used for some step in each block.” Id. at 4. We find no inconsistency in these positions with Patent Owner’s proposed construction. In light of the foregoing considerations, we adopt Patent Owner’s proposed construction.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “Petitioner contends that the claims canceled in IPR2016-00341 “were directed to methods that recited the function performed by the second logic,” and that “Patent Owner is now estopped from arguing the subject matter of the same scope is patentable.” Pet. Reply 315, 1. Petitioner cites no authority to support this position, which improperly focuses on only one limitation of the claims, divorced from the claims’ other limitations. We reject Petitioner’s contention because the method claims canceled in IPR2016-00341 do not constitute “subject matter of the same scope” as the apparatus claims challenged in these proceedings.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “skill in the art relevant to the ’703 patent “would be a person with a graduate degree (MS or PhD) in medical physics or a related field (e.g. Physics, Engineering) and three years of experience in radiation oncology beyond the completion date of their degree.” Ex. 1021 ¶ 17. Patent Owner’s expert, Dr. Mutic, expresses a level of ordinary skill that is generally similar to Petitioner’s expert, but accounts for the possibility of a medical education instead of a medical-physics education: [A] person of ordinary skill in the art . . . would be a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications. Alternatively, one of ordinary skill in the art might have an M.D. degree in the same relevant fields and two or more years of practical experience with image processing and the use of computer systems that is related to medical applications. Ex. 2012 ¶ 36. The similarity in the experts’ opinions is reinforced by Dr. Mutic’s assertion that he has “considered Dr. Hamilton’s definition of the level of ordinary skill in the art and determined that it does not differ from [his] own expressions of this concept in any way that is relevant to the opinions” he expresses in his Declaration. Id. ¶ 38. Based on the expert testimony in the record, we agree with and adopt the level of skill expressed by Dr. Hamilton.” slip op. at 17

  Patent outcomesUS 8,867,703 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,867,703
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00956 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable because the asserted combinations did not teach dynamically building a parse tree while receiving incoming code.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We have considered these constructions in light of the full trial record. We see no compelling reason to alter these constructions in light of the parties’ 4 We repeat our observation from the Institution Decision that claim 9 recites “detecting any one of a plurality of programming languages in which the incoming stream is written” (emphasis added), but requires instantiating the scanner “in response to said determining” (emphasis added), without apparent antecedent basis. We consider “said determining” in claim 9 as intended to refer to the previously recited “detecting,” in parallel with the structure of claims 1 and 22. Dec. 11 n.4. positions as developed during the trial, and we therefore adopt them for this Final Written Decision. See PO Resp. 12–13 (“Although Patent Owner maintains that the terms ‘dynamically building’ and ‘dynamically detecting’ do not require construction, it does not contest these constructions for purposes of this proceeding, and they are, therefore, controlling.”); Reply 3 (noting Patent Owner does not contest the preliminary constructions of “dynamically building” and “dynamically detecting”).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Consequently, Dr. Medvidovic opines, and we agree, that “simply because Chandnani’s tokenizer operates on a data stream does not demand or even imply that the data stream is being received while being tokenized.” Id. As Patent Owner contends, because Chandnani discloses that operation of the tokenizer “only occurs on the second pass through the data stream, . . . the data stream must have already been received before the stream of tokens is generated.” PO Resp. 21. “[W]hile it is conceivable (though not explicitly disclosed) that a data stream might be ‘incoming’ while Chandnani uses the ‘language check data to select the language definition data to use for the detection process,’ it is not possible for the data stream to still be ‘incoming’ when the data stream ‘is lexically analyzed again, this time using the language definition data, to generate a stream of tokens.’” Id. (citing Ex. 1003, col. 8, ll. 4–17; Ex. 2007 ¶¶ 73–74).” slip op. at 20

  Patent outcomesUS 8,225,408 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408
• Palo Alto Networks, Inc. v. Finjan, Inc.No claims unpatentable
  PTAB · Mar 17, 2017 · IPR2016-00157 · APJ Patrick M Boucher · IPR · Final written decision

  The Board held claims 1, 3–7, 9, 12–16, 18–23, 29, and 35 not shown unpatentable under the instituted §103 grounds because the art did not teach dynamically building a parse tree while receiving the code …

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “The dispositive issue is whether Petitioner demonstrates, by a preponderance of the evidence, that the combination of Chandnani and Kolawa teaches or suggests “dynamically building” a parse tree “while” receiving an incoming stream of program code. Although the specific language differs in immaterial respects by reciting or omitting the structural elements of a “computer” or a “receiver,” such a limitation appears in each of independent claims 1, 9, 22, 23, 29, and 35 through a combination of recitations that include receipt of the incoming stream of programming code and “dynamically building” the parse tree “while” receiving the incoming stream. Petitioner contends that all limitations of independent claims 1, 9, 22, 23, 29, and 35 are taught by Chandnani “except for the use of a parse tree to store and analyze programming code,” and that “[i]t would have been obvious to combine Chandnani’s scanner with the parse-tree teachings of Kolawa” to meet the full set of limitations of each independent claim. Pet. 2001, 19–20. Although the parties agree that Chandnani describes lexical analysis of a “data stream” to generate a stream of tokens, they disagree whether Chandnani discloses that such lexical analysis occurs while receiving the incoming data stream, as recited in each of the independent claims. That is, the parties disagree whether Chandnani discloses a time period for generation of the token stream that overlaps a time period during which the incoming stream is received, as required by our construction of “dynamically building.”” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “We have considered the opinions of both experts and the underlying bases for those opinions. In light of specific disclosures in Chandnani, we conclude that Patent Owner’s expert, Dr. Medvidovic, articulates the more compelling position. Of particular relevance is the following disclosure from Chandnani: The script language virus detection methodologies described herein may be performed by a computer in one or a combination of the following circumstances. The script language virus detection methodologies may be performed periodically (e.g., once/twice per day) or at selected times (e.g., each time the computer is powered up or restarted) by the computer on all relevant electronic files. In addition, the script language virus detection methodologies may be performed on a file (or a data stream received by the computer through a network) before the file is stored/copied/executed/opened on the computer. Ex. 1003, col. 9, ll. 6–16 (emphasis added). In considering this passage, Petitioner’s expert, Dr. Rubin, makes the conclusory statement that “[t]hus, under [Patent Owner’s] own interpretation of the claim language, the Chandnani+Kolawa combination teaches the ‘dynamically building’ limitation.” Ex. 1002 ¶ 167. We accord such a conclusory assertion little weight. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Based on its expert’s testimony, Petitioner contends that a person of ordinary skill in the art at the time of the claimed invention would have held a bachelor’s degree or the equivalent in computer science or related academic fields, and three to four years of additional experience in the field of computer security, or equivalent work experience. Pet. 2001, 14 (citing Ex. 1002 ¶ 33). Patent Owner does not dispute Petitioner’s contention, and its expert’s opinion on the level of ordinary skill is generally similar to that of Petitioner’s expert, differing only by about a year in minimum work experience and suggesting an advanced degree as a substitute for work experience. See Ex. 2007 ¶ 37. Furthermore, Patent Owner’s expert, Dr. Medvidovic, asserts that the opinions stated in his Declaration “would be the same if rendered from the perspective of a person of ordinary skill in the art set out by [Petitioner’s expert,] Dr. Rubin.” Id. at ¶ 40. Based on the expert testimony in the record, we agree with and adopt the level of skill advocated by Petitioner.” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied

    “At the oral hearing, we expressed surprise that a party would seek to exclude the cross-examination testimony of its own expert witness. See Tr. 49:19–52:8. Patent Owner’s counsel explained that it “provided a motion to exclude based on the way that the evidence was used in the reply.” Tr. 50:1–6. But the Board has previously explained that “neither a motion to strike nor a motion to exclude is a proper mechanism to present argument that a reply contains new arguments.” Ultratec, Inc. v. Sorenson Communications, Inc., Case IPR2013-00288, Paper 38 at 2 (PTAB May 23, 2014). Rather, an evaluation of the propriety of, and weight to be accorded to, arguments made in a reply is left to the determination of the Board, with parties afforded various opportunities to provide context for the evidence. See 37 C.F.R. §§ 42.23, 42.65. We, therefore, consider Patent Owner’s arguments as going to the weight that should be given to the cross-examination testimony and related deposition exhibit, not to the admissibility of that evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). As indicated above, we have considered and weighed the testimony provided by Dr. Medvidovic and have not relied on the testimony of Dr. Bims in reaching our decision. Accordingly, we deny Patent Owner’s Motion to Exclude.” slip op. at 25

  Patent outcomesUS 8,225,408 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,225,408

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.